1014-00003 · Optiwave Semiconductor Corp · Fact Discovery

ows-first-interrogatories.docx DOCUMENT Litigation

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UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S FIRST SET OF INTERROGATORIES TO DEFENDANT LUMOS PHOTONICS, INC.

(Interrogatory Nos. 1–25)

Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff"), by and through its attorneys of record, Calderwood & Harkness LLP, hereby propounds the following First Set of Interrogatories (Nos. 1–25) to Defendant Lumos Photonics, Inc. ("Lumos" or "Defendant"), pursuant to Rules 26 and 33 of the Federal Rules of Civil Procedure, the Local Rules of the United States District Court for the Northern District of California, and the Patent Local Rules of the Northern District of California. Defendant is requested to answer each interrogatory separately and fully, in writing, under oath, in accordance with the Instructions and Definitions set forth below.

I. INSTRUCTIONS

Instruction No. 1 — Governing Rules. These interrogatories are propounded pursuant to Federal Rules of Civil Procedure 26 and 33, and the Local Rules of the United States District Court for the Northern District of California, including the Patent Local Rules. Each interrogatory shall be answered in conformity with the requirements of those Rules and any applicable orders of this Court.

Instruction No. 2 — Time for Response. Defendant shall serve its answers and objections to each interrogatory fully and under oath within thirty (30) days of service of these interrogatories, or within such other time as may be permitted by written agreement of the parties or by order of the Court. Responses shall be served on counsel for Plaintiff at the address set forth in the signature block below.

Instruction No. 3 — Duty to Supplement. Pursuant to Federal Rule of Civil Procedure 26(e), Defendant has a continuing obligation to supplement or correct its responses to these interrogatories in a timely manner if Defendant learns that a response is in some material respect incomplete or incorrect, and if the additional or corrective information has not otherwise been made known to Plaintiff during the discovery process or in writing. This duty of supplementation extends through the close of discovery and trial.

Instruction No. 4 — Identification of Persons. Where an interrogatory requests the identification of a person, Defendant shall provide the person's full legal name, current title or position, employer or business affiliation, and last known business address and telephone number. If any of this information is unknown to Defendant after the exercise of due diligence, Defendant shall so state and provide whatever partial information is available.

Instruction No. 5 — Identification of Documents. Where an interrogatory requests the identification of documents, Defendant shall provide a description sufficient to identify each responsive document, including the date of the document, the author(s) or originator(s), the recipient(s) or addressee(s), the general subject matter of the document, the type of document (e.g., memorandum, email, report, presentation), and the Bates number(s) or other production identifier if the document has been or will be produced in this action. If the document has not yet been produced, Defendant shall identify it with sufficient specificity to permit Plaintiff to request its production.

Instruction No. 6 — Responses Based on Information and Belief. If Defendant cannot answer any interrogatory fully after exercising due diligence to obtain the responsive information, Defendant shall so state, provide all information available to Defendant as of the date of the response, and describe in reasonable detail the efforts Defendant made to obtain the complete information. A response that an interrogatory "calls for information not in Defendant's possession" shall not be deemed a sufficient answer if Defendant has not undertaken reasonable efforts to obtain such information from persons or entities within Defendant's control or otherwise reasonably available to Defendant.

Instruction No. 7 — Objections. If Defendant objects to any interrogatory, in whole or in part, Defendant shall state the objection with specificity, including the legal basis for the objection. Notwithstanding any objection, Defendant shall answer the interrogatory to the extent that it is not objectionable. A general or boilerplate objection without specification shall not be deemed a valid objection. If Defendant objects to an interrogatory as overly broad or unduly burdensome, Defendant shall describe the specific burden and propose a reasonable alternative scope.

Instruction No. 8 — Privilege Claims. If Defendant withholds any information responsive to these interrogatories on the basis of attorney-client privilege, the work product doctrine, or any other privilege or protection, Defendant shall, consistent with Federal Rule of Civil Procedure 26(b)(5)(A), provide information sufficient to enable Plaintiff to evaluate the applicability of the privilege or protection claimed, including: (a) the nature of the information withheld; (b) the date of the communication or document; (c) the persons who made, sent, or received the communication; (d) the general subject matter of the information; and (e) the specific privilege or protection asserted.

Instruction No. 9 — Reference to Business Records. If Defendant elects to specify and produce business records in lieu of answering an interrogatory, as permitted by Federal Rule of Civil Procedure 33(d), the specification shall be made in sufficient detail to enable Plaintiff to locate and identify the responsive records as readily as could the responding party. This specification shall include, at a minimum, the identity and location of the records, the manner in which they are organized, and the specific records responsive to each interrogatory.

Instruction No. 10 — Scope. Unless otherwise expressly stated in a particular interrogatory, each interrogatory covers the period from January 1, 2016 to the present date. "Present" shall mean the date on which Defendant serves its response to these interrogatories.

II. DEFINITIONS

As used in these interrogatories, the following terms shall have the meanings set forth below. These definitions are intended to be read broadly, in accordance with the Federal Rules of Civil Procedure, and shall not be construed to narrow or limit the scope of any interrogatory.

Definition No. 1 — "Plaintiff" or "OWS" shall mean Optiwave Semiconductor Corp., a Delaware corporation, including its current and former officers, directors, employees, agents, consultants, subsidiaries, affiliates, predecessors, successors, and assigns.

Definition No. 2 — "Defendant" or "Lumos" shall mean Lumos Photonics, Inc., a Delaware corporation, including its current and former officers, directors, employees, agents, consultants, subsidiaries, affiliates, predecessors, successors, and assigns, including but not limited to any operations, divisions, or facilities located at 9400 McNeil Drive, Building 7, Austin, TX 78758; 4750 Great America Parkway, Suite 320, Santa Clara, CA 95054; and 3200 NE Shute Road, Hillsboro, OR 97124, as well as any other domestic or international facilities at which the Accused Products are or were designed, developed, manufactured, tested, or sold.

Definition No. 3 — "Accused Products" shall mean the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver, including all versions, variants, configurations, engineering samples, prototypes, development samples, alpha and beta units, pre-production units, and successor products thereof, regardless of model number, revision, or designation, and including all components and subassemblies thereof that are alleged to practice one or more claims of the Patents-in-Suit.

Definition No. 4 — "Patents-in-Suit" shall mean: (a) U.S. Patent No. 10,234,567 (hereinafter "the '567 Patent"); (b) U.S. Patent No. 10,891,234 (hereinafter "the '234 Patent"); (c) U.S. Patent No. 11,045,678 (hereinafter "the '678 Patent"); and (d) U.S. Patent No. 11,312,890 (hereinafter "the '890 Patent"), including all claims, specifications, drawings, and prosecution histories thereof.

Definition No. 5 — "Person" shall mean any natural person, corporation, partnership, joint venture, limited liability company, association, trust, governmental entity, agency, or instrumentality, or any other legal entity.

Definition No. 6 — "Document" or "Documents" shall have the broadest meaning ascribed under Federal Rule of Civil Procedure 34(a) and Federal Rule of Evidence 1001, and shall include, without limitation, all writings, drawings, graphs, charts, photographs, audio and video recordings, and any other data compilation from which information can be obtained, including all electronically stored information ("ESI") such as emails, word processing documents, spreadsheets, databases, presentations, instant messages, text messages, voicemail recordings, and metadata associated therewith, in any medium or format.

Definition No. 7 — "Communication" shall mean any oral, written, or electronic transmission of information between two or more persons, including but not limited to emails, letters, memoranda, facsimiles, text messages, instant messages, Meridian Solutions or Northgate Data Systems messages, telephone calls, voicemail messages, video conferences, and in-person conversations.

Definition No. 8 — "Identify" (with respect to persons) shall mean to provide the full legal name, current title or position, current employer or business affiliation, last known business address, and last known telephone number of the person identified.

Definition No. 9 — "Identify" (with respect to documents) shall mean to provide the date of the document, the name(s) of the author(s) or originator(s), the name(s) of the recipient(s) or addressee(s), the type of document (e.g., email, memorandum, report, drawing, specification), the general subject matter, and the Bates number(s) or other production identifier if the document has been or will be produced in this action.

Definition No. 10 — "Relate to" or "Relating to" shall mean concerning, referring to, describing, evidencing, constituting, reflecting, pertaining to, connected with, commenting on, responsive to, having a logical connection with, or being relevant to, in whole or in part, directly or indirectly.

Definition No. 11 — "You" or "Your" shall mean Defendant Lumos Photonics, Inc. as defined in Definition No. 2 above.

Definition No. 12 — "Prior Art" shall mean any patent, published patent application, printed publication, public use, sale, offer for sale, or other activity or disclosure that may be relevant to the validity of any claim of any of the Patents-in-Suit under 35 U.S.C. §§ 102 or 103, including prior art arising under any applicable version of those statutes (pre-AIA or AIA, as applicable to each Patent-in-Suit).

Definition No. 13 — "POSITA" shall mean a person of ordinary skill in the art, as that term is understood in patent law, having the education, experience, and knowledge that would be attributed to such a person at the relevant time period for each Patent-in-Suit.

III. INTERROGATORIES

INTERROGATORY NO. 1:

State in detail all facts, grounds, and bases supporting Defendant's contention that the Accused Products do not infringe any asserted claim of U.S. Patent No. 10,234,567 ("the '567 Patent"), specifically Claims 1, 4, 7, 12, and 15 thereof, including but not limited to the following:

(a) Defendant's identification of each limitation of each asserted claim of the '567 Patent that Defendant contends is not met by any Accused Product;

(b) A detailed explanation of why Defendant contends each such limitation is not met, including all technical and factual bases for that contention;

(d) Identification of all documents supporting Defendant's non-infringement contentions with respect to the '567 Patent.

Defendant's response shall include contentions regarding both literal infringement and infringement under the doctrine of equivalents. Defendant shall specifically address the "adiabatically coupled" limitation recited in the asserted claims and shall explain in detail why the LumosBridge™ segmented taper design does or does not satisfy that limitation under any proposed claim construction, including any construction proposed in Defendant's claim construction brief. If Defendant contends that the segmented taper design is structurally or functionally distinct from an adiabatic coupler as that term is used in the '567 Patent specification and prosecution history, Defendant shall set forth all facts and technical bases supporting that contention.

INTERROGATORY NO. 2:

State in detail all facts, grounds, and bases supporting Defendant's contention that the Accused Products do not infringe any asserted claim of U.S. Patent No. 10,891,234 ("the '234 Patent"), specifically Claims 1, 3, 5, 8, and 11 thereof, including but not limited to the following:

(a) Identification of each limitation of each asserted claim of the '234 Patent that Defendant contends is not met by any Accused Product;

(b) A detailed explanation of why Defendant contends each such limitation is not met, including all technical and factual bases for that contention;

(d) Identification of all documents supporting Defendant's non-infringement contentions with respect to the '234 Patent.

Defendant shall specifically address the "graded buffer layer having a continuously varying germanium concentration" limitation recited in the asserted claims. Defendant shall explain in detail the relationship of Defendant's step-graded SiGe buffer design—which Plaintiff understands to include four discrete composition steps at germanium fractions of approximately 0.25, 0.50, 0.75, and 1.0—to that limitation. If Defendant contends that a step-graded buffer with four discrete composition steps does not satisfy the "continuously varying" language either literally or under the doctrine of equivalents, Defendant shall set forth all facts, technical bases, and expert opinions supporting that contention.

INTERROGATORY NO. 3:

State in detail all facts, grounds, and bases supporting Defendant's contention that the Accused Products do not infringe any asserted claim of U.S. Patent No. 11,045,678 ("the '678 Patent"), specifically Claims 1, 2, 6, 9, and 14 thereof, including but not limited to the following:

(a) Identification of each limitation of each asserted claim of the '678 Patent that Defendant contends is not met by any Accused Product;

(b) A detailed explanation of why Defendant contends each such limitation is not met, including all technical and factual bases for that contention;

(d) Identification of all documents supporting Defendant's non-infringement contentions with respect to the '678 Patent.

Defendant shall specifically address the limitation "integrated wavelength-division multiplexing element monolithically formed on a single silicon die" recited in the asserted claims. Defendant shall explain in detail how the LumosBridge™ 800G Optical Engine platform utilizes micro-transfer-printed III-V gain elements bonded to the silicon photonic integrated circuit and whether Defendant contends that this architecture does not constitute a WDM element "monolithically formed on a single silicon die" either literally or under the doctrine of equivalents. Defendant's response shall include all facts and technical bases supporting any such contention, including any distinction Defendant draws between monolithic integration and heterogeneous or hybrid integration approaches.

INTERROGATORY NO. 4:

State in detail all facts, grounds, and bases supporting Defendant's contention that the Accused Products do not infringe any asserted claim of U.S. Patent No. 11,312,890 ("the '890 Patent"), specifically Claims 1, 5, 8, and 13 thereof, including but not limited to the following:

(a) Identification of each limitation of each asserted claim of the '890 Patent that Defendant contends is not met by any Accused Product;

(b) A detailed explanation of why Defendant contends each such limitation is not met, including all technical and factual bases for that contention;

(d) Identification of all documents supporting Defendant's non-infringement contentions with respect to the '890 Patent.

Defendant shall specifically address the "pre-emphasis equalization stage electrically co-integrated with the modulator on a common substrate" limitation recited in the asserted claims. Defendant shall explain in detail the design of Defendant's CMOS driver die and its interconnection to the silicon photonic modulator die, including but not limited to whether Defendant uses a separate CMOS driver die flip-chip bonded to the silicon photonic modulator die via copper pillar micro-bumps. If Defendant contends that such an architecture does not satisfy the "electrically co-integrated ... on a common substrate" limitation either literally or under the doctrine of equivalents, Defendant shall set forth all facts, technical bases, and design documentation supporting that contention.

INTERROGATORY NO. 5:

For each asserted claim of each Patent-in-Suit that Defendant contends is invalid under 35 U.S.C. § 102 (anticipation), provide the following information:

(a) Identification of each prior art reference relied upon by Defendant, including the title, author(s) or inventor(s), date of publication or issuance, patent number or publication number, and any other identifying information;

(b) The specific subsection of 35 U.S.C. § 102 under which each prior art reference is asserted (e.g., § 102(a)(1), § 102(a)(2), or the corresponding pre-AIA subsection, as applicable);

(c) A claim-by-claim, limitation-by-limitation mapping of each prior art reference to each asserted claim that Defendant contends is anticipated, identifying the specific portions of the prior art reference (by column, line, figure, or paragraph) that correspond to each limitation;

(d) The effective date of each prior art reference as Defendant contends it should be determined;

(e) Identification of each person with knowledge of the facts supporting Defendant's anticipation contentions;

(f) Identification of all documents supporting Defendant's anticipation contentions.

Defendant's response shall include, but need not be limited to, contentions based on: U.S. Patent No. 9,456,012 to Tanaka et al., issued September 6, 2016 ("Tanaka"); and European Patent Application EP 3,234,567 A1 to Nordlicht Photonische GmbH, published August 2, 2017 ("Nordlicht"). If Defendant relies upon additional prior art references for anticipation, Defendant shall provide the same information for each such reference.

INTERROGATORY NO. 6:

For each asserted claim of each Patent-in-Suit that Defendant contends is invalid under 35 U.S.C. § 103 (obviousness), provide the following information:

(a) Identification of each prior art reference or combination of references relied upon by Defendant, including the title, author(s) or inventor(s), date of publication or issuance, and any other identifying information;

(b) The motivation, suggestion, or reason to combine the identified references, including any teaching in the references themselves, the general knowledge of a POSITA, market demands, or design incentives;

(c) A claim-by-claim, limitation-by-limitation mapping of the prior art reference(s) to each asserted claim that Defendant contends is obvious, identifying the specific portions of each reference (by column, line, figure, or paragraph) that teach or suggest each limitation;

(d) The level of ordinary skill in the art as Defendant contends it should be defined, including the educational background, years of experience, and specific areas of technical knowledge attributed to a POSITA;

(e) Identification of each person with knowledge of the facts supporting Defendant's obviousness contentions;

(f) Identification of all documents supporting Defendant's obviousness contentions, including any expert reports or analyses.

Defendant's response shall include, but need not be limited to, contentions based on: Chen & Liu, "Segmented Taper Coupler Design for Low-Loss Fiber-to-Chip Coupling," Journal of Photonic Integration, Vol. 14, No. 3, pp. 217–229 (2016) ("Chen & Liu"); and Iyer & Patel, "Co-Design of Modulator Drivers and Silicon Photonic Mach-Zehnder Structures," IEEE Transactions on Circuits and Systems, Vol. 65, No. 8, pp. 2701–2713 (2018) ("Iyer & Patel"). If Defendant relies upon additional references or combinations, Defendant shall provide the same information for each such reference or combination. Defendant shall also identify any secondary considerations of nonobviousness (e.g., commercial success, long-felt need, failure of others, unexpected results, copying, or skepticism) that Defendant contends are relevant, and shall explain why Defendant contends such secondary considerations do not support validity.

INTERROGATORY NO. 7:

For each asserted claim of each Patent-in-Suit that Defendant contends is invalid under 35 U.S.C. § 112, including but not limited to invalidity based on failure to comply with the written description requirement (§ 112(a)), lack of enablement (§ 112(a)), indefiniteness (§ 112(b)), or any other basis under § 112, provide the following information:

(a) The specific subsection of 35 U.S.C. § 112 and the ground of invalidity asserted (e.g., written description, enablement, indefiniteness, means-plus-function);

(b) The specific claim term(s) or limitation(s) at issue for each ground of invalidity;

(d) Identification of each person with knowledge of the facts supporting Defendant's contentions under § 112;

(e) Identification of all documents supporting Defendant's § 112 contentions.

If Defendant contends that any claim term is a means-plus-function limitation under § 112(f), Defendant shall identify the claimed function and the corresponding structure, material, or acts disclosed in the specification, and shall explain whether Defendant contends that the specification fails to disclose adequate corresponding structure.

INTERROGATORY NO. 8:

Identify each argument or position Defendant intends to assert based on prosecution history estoppel with respect to any Patent-in-Suit, including the following:

(a) The specific patent and claim(s) to which the prosecution history estoppel defense applies;

(b) The specific amendment to the claims or argument made by the patentee during prosecution of the patent before the United States Patent and Trademark Office;

(d) The scope of subject matter Defendant contends was surrendered by the patentee as a result of the amendment or argument, including the specific equivalent(s) that Defendant contends fall within the surrendered territory;

(e) Identification of all documents supporting Defendant's prosecution history estoppel contentions, including specific citations to the prosecution history file.

Defendant shall specifically address any prosecution history estoppel arising from: (i) the addition of the term "adiabatically coupled" to the claims of the '567 Patent during prosecution to overcome or distinguish U.S. Patent No. 9,456,012 to Tanaka et al.; and (ii) the addition of the term "monolithically formed" to the claims of the '678 Patent during prosecution to overcome or distinguish hybrid integration prior art. Defendant shall explain in detail what subject matter Defendant contends was surrendered by each such amendment and why Defendant contends that the Accused Products fall outside the scope of the claims as properly limited by such estoppel.

INTERROGATORY NO. 9:

Identify all persons involved in the design, development, engineering, testing, validation, qualification, and commercialization of the LumosBridge™ 800G Optical Engine, including but not limited to engineers, scientists, designers, managers, directors, vice presidents, and other executives who participated in or supervised any aspect of the product's development from initial conception through commercial release. For each such person, provide the following information:

(a) Full name;

(b) Title or position held at the time of their involvement;

(d) The approximate dates of their involvement;

(e) Current employer and business address (to the extent known to Defendant).

INTERROGATORY NO. 10:

Identify all persons involved in the design, development, engineering, testing, validation, qualification, and commercialization of the LumosEdge™ 400ZR+ Pluggable Transceiver, including but not limited to engineers, scientists, designers, managers, directors, vice presidents, and other executives who participated in or supervised any aspect of the product's development from initial conception through commercial release. For each such person, provide the following information:

(a) Full name;

(b) Title or position held at the time of their involvement;

(d) The approximate dates of their involvement;

(e) Current employer and business address (to the extent known to Defendant).

INTERROGATORY NO. 11:

Describe in detail the waveguide coupling architecture used in each Accused Product, including but not limited to the following:

(a) Whether the coupling design uses a continuous taper, a segmented taper, an inverse taper, a grating coupler, or any other coupling mechanism, and if multiple mechanisms are used, a description of each;

(b) The tip width of any tapered waveguide elements at their narrowest point, as well as the starting width and the overall taper length;

(c) The materials used in the waveguide core and cladding layers (e.g., silicon, silicon nitride, silicon oxynitride, or other materials), including the specific refractive indices at the operating wavelength;

(d) Whether the coupling is adiabatic or non-adiabatic in nature, including the basis for that characterization and any simulation or measurement data supporting the characterization;

(e) Identification of all design documents, specifications, simulation results (including mode-solver and BPM simulations), mask layout files, and testing reports relating to the waveguide coupling design of each Accused Product.

INTERROGATORY NO. 12:

Describe in detail the germanium-on-silicon photodetector architecture used in each Accused Product, including but not limited to the following:

(a) The structure and composition of any buffer layer between the silicon substrate (or silicon waveguide layer) and the germanium absorber, including the material system used (e.g., SiGe, pure Ge seed, or other);

(b) Whether the buffer layer is continuously graded (i.e., with a germanium concentration that varies smoothly as a function of thickness), step-graded (i.e., with discrete layers of fixed germanium concentration), or of any other configuration;

(c) The specific germanium concentration (expressed as a mole fraction or percentage) at each point or step in the buffer layer, and the thickness of each discrete layer or the grading profile of any continuously varying layer;

(d) The total thickness of the germanium absorber layer and any cap or contact layers above the absorber;

(e) Identification of all design documents, epitaxial growth specifications, process flow documents, characterization data (including XRD, TEM, and responsivity measurements), and any other documents relating to the photodetector design of each Accused Product.

INTERROGATORY NO. 13:

Describe in detail the wavelength-division multiplexing ("WDM") integration approach used in the LumosBridge™ 800G Optical Engine, including but not limited to the following:

(a) Whether the WDM element (including any arrayed waveguide grating, echelle grating, ring resonator filter, or other wavelength-selective element) is monolithically formed on a single silicon die, or is formed using heterogeneous integration, hybrid integration, flip-chip bonding, micro-transfer printing, or any other integration technique;

(b) The materials and process steps used to form the WDM element, including any lithographic, etching, deposition, bonding, or epitaxial growth steps;

(c) Whether any III-V semiconductor gain elements (e.g., InP-based or GaAs-based laser diodes or semiconductor optical amplifiers) are bonded, transferred, or otherwise attached to the silicon photonic integrated circuit, and if so, the method of attachment and the materials involved;

(d) Identification of all design documents, process flow specifications, mask layout files, and performance characterization data relating to the WDM integration approach.

INTERROGATORY NO. 14:

Describe in detail the modulator driver circuit architecture used in each Accused Product, including but not limited to the following:

(a) Whether the pre-emphasis equalization stage (or any equalization, feed-forward equalization, or pre-distortion circuit) is fabricated on the same substrate as the Mach-Zehnder modulator or on a separate die;

(b) The interconnection method between the driver circuit and the Mach-Zehnder modulator, including whether the connection is made by wire bonding, flip-chip bonding via copper pillar micro-bumps, solder bumps, through-silicon vias (TSVs), an interposer, package-level routing, or any other interconnection technology;

(c) The semiconductor process technology used for the driver die, including the CMOS technology node (e.g., 28 nm, 16 nm, 7 nm), foundry, and any design-specific modifications or characterizations;

(d) Identification of all design documents, circuit schematics, layout files (e.g., GDSII), simulation results, and product specifications relating to the modulator driver architecture of each Accused Product.

INTERROGATORY NO. 15:

State the total revenue, in United States dollars, generated by Defendant from the sale, license, lease, or other commercial disposition of the LumosBridge™ 800G Optical Engine for each of the following periods:

(a) Q1 2022 (January 1, 2022 through March 31, 2022), which Plaintiff understands to coincide with the first commercial shipments to customers;

(b) Q2 2022 (April 1, 2022 through June 30, 2022);

(d) Q4 2022 (October 1, 2022 through December 31, 2022);

(e) Full calendar year 2022 (January 1, 2022 through December 31, 2022);

(f) Q1 2023 through the date of Defendant's response to these interrogatories.

For each period identified above, state the number of units of the LumosBridge™ 800G Optical Engine sold and the average selling price per unit. Identify the unit price range for different configurations or variants of the product, including but not limited to any pricing differences based on data rate, wavelength count, or packaging options. Additionally, identify any revenue attributable to customers or end users located in the Northern District of California, including but not limited to customers headquartered or with principal offices in San Jose, Santa Clara, Sunnyvale, Mountain View, Palo Alto, or other cities within the district.

INTERROGATORY NO. 16:

State the total revenue, in United States dollars, generated by Defendant from the sale, license, lease, or other commercial disposition of the LumosEdge™ 400ZR+ Pluggable Transceiver for each of the following periods:

(a) Q3 2021 (July 1, 2021 through September 30, 2021), which Plaintiff understands to coincide with the commencement of production;

(b) Q4 2021 (October 1, 2021 through December 31, 2021);

(d) Q2 2022 (April 1, 2022 through June 30, 2022);

(e) Q3 2022 (July 1, 2022 through September 30, 2022);

(f) Q4 2022 (October 1, 2022 through December 31, 2022);

(g) Full calendar year 2022 (January 1, 2022 through December 31, 2022);

(h) Q1 2023 through the date of Defendant's response to these interrogatories.

For each period identified above, state the number of units of the LumosEdge™ 400ZR+ Pluggable Transceiver sold and the average selling price per unit. Identify the unit price range for different configurations or variants, including but not limited to any pricing differences based on reach, tunable wavelength range, or form factor. Additionally, identify any revenue attributable to customers or end users located in the Northern District of California.

INTERROGATORY NO. 17:

Confirm or deny that the combined revenue from the Accused Products (i.e., the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver) for calendar year 2022 (January 1, 2022 through December 31, 2022) was approximately One Hundred Forty-Eight Million Six Hundred Thousand Dollars ($148,600,000). If Defendant denies that the combined revenue was approximately $148.6 million, state the correct combined revenue figure for that period and provide a detailed explanation of the basis for any discrepancy between Plaintiff's estimate and Defendant's figure, including identification of all supporting documents, accounting records, and financial statements.

INTERROGATORY NO. 18:

For each Accused Product (the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver), state the gross profit margin and operating profit margin for each fiscal quarter in calendar year 2022 (Q1 through Q4), including a breakdown of the following components used in calculating those margins:

(a) Total revenue for the product in each quarter;

(b) Cost of goods sold ("COGS"), including direct material costs, direct labor costs, and manufacturing overhead;

(d) Gross profit margin (gross profit divided by revenue, expressed as a percentage);

(e) Direct operating expenses attributable to the product, including research and development expenses, sales and marketing expenses, and general and administrative expenses, to the extent allocated;

(f) Allocated indirect costs, including the methodology used to allocate such costs;

(g) Operating profit (gross profit less operating expenses);

(h) Operating profit margin (operating profit divided by revenue, expressed as a percentage).

Identify all supporting documents, including internal financial reports, cost accounting records, and product line profitability analyses.

INTERROGATORY NO. 19:

State when Defendant first became aware of each Patent-in-Suit (U.S. Patent Nos. 10,234,567; 10,891,234; 11,045,678; and 11,312,890), including the following information for each patent:

(a) The date on which Defendant first became aware of the patent;

(b) The circumstances under which Defendant became aware, including whether awareness arose from a patent search, publication, communication from Plaintiff, communication from a third party, litigation, or other means;

(c) The identity of the person(s) within Defendant's organization who first became aware of the patent, and the identity of any person(s) to whom that awareness was subsequently communicated;

(d) Any actions taken by Defendant in response to becoming aware of the patent, including but not limited to: obtaining opinions of counsel regarding non-infringement, invalidity, or freedom to operate; initiating or modifying design-around efforts; conducting prior art searches; revising product designs or specifications; or engaging in any internal discussions or analyses regarding the patent;

(e) Identification of all documents reflecting Defendant's awareness of each patent or any responsive actions taken, including internal emails, memoranda, meeting minutes, and presentations.

Defendant shall specifically address its receipt of the cease-and-desist letter from Plaintiff Optiwave Semiconductor Corp. dated March 15, 2022, including the date of receipt, the person(s) who received and reviewed the letter, and all actions taken in response thereto.

INTERROGATORY NO. 20:

State whether Defendant obtained any opinion of counsel—including any formal written opinion, informal oral advice, draft opinion, or legal memorandum—regarding any of the following subjects:

(a) Non-infringement of any claim of any Patent-in-Suit by any Accused Product;

(b) Invalidity of any claim of any Patent-in-Suit;

(c) Freedom to operate with respect to any Accused Product in view of any Patent-in-Suit or any related patent or patent application.

If any such opinion was obtained, identify: (i) the date of each opinion or advice; (ii) the attorney or law firm providing the opinion; (iii) the specific patent(s) and claims addressed; and (iv) whether the opinion was oral or written. Plaintiff does not at this time seek production of the substance of privileged attorney-client communications but seeks identification of the existence of such opinions for purposes of evaluating Defendant's state of mind and any affirmative defense of reliance on advice of counsel, if asserted. If Defendant intends to rely on an advice-of-counsel defense at trial, Defendant shall so state.

INTERROGATORY NO. 21:

Identify all prior art searches conducted by or on behalf of Defendant relating to any Patent-in-Suit or to the technology covered thereby, including but not limited to searches relating to waveguide coupling, germanium-on-silicon photodetectors, wavelength-division multiplexing integration on silicon, and modulator driver co-integration. For each search, provide the following:

(a) The date or date range of the search;

(b) The person or entity that conducted the search, including whether the search was performed internally by Defendant's employees or externally by a third-party search firm, patent agent, or law firm;

(d) The databases or sources searched (e.g., USPTO, EPO, WIPO, Severin Industries Patents, IEEE Xplore, Pemberton Data Systems, technical journals);

(e) The prior art references identified as a result of the search;

(f) Identification of all documents reflecting the results of such searches, including search reports, summaries, and any analyses of the identified references.

INTERROGATORY NO. 22:

Identify all third-party suppliers, contract manufacturers, foundries, and fabrication facilities involved in the manufacture, fabrication, assembly, testing, or packaging of any component or subassembly of any Accused Product. This interrogatory encompasses, without limitation, suppliers and fabricators of silicon photonic integrated circuits, germanium-on-silicon photodetectors, III-V semiconductor gain elements, driver integrated circuits, transimpedance amplifier integrated circuits, optical fiber arrays, lens assemblies, and packaging components. For each third-party entity, provide the following:

(a) The full legal name and business address of the entity;

(b) The specific component(s) or subassembly(ies) supplied, fabricated, or assembled by that entity;

(c) The process technology used (e.g., CMOS node for driver ICs, SOI platform for silicon photonics, MOCVD for III-V epitaxial growth);

(d) The dates of Defendant's relationship with the entity as it relates to the Accused Products;

(e) Whether the entity performed any design, development, or engineering services in addition to manufacturing.

INTERROGATORY NO. 23:

Identify all customers that have purchased, received evaluation or engineering samples of, or placed orders for any Accused Product, including but not limited to hyperscale data center operators, cloud service providers, telecommunications companies, network equipment manufacturers, and system integrators. For each customer, provide the following:

(a) The full legal name and business address of the customer;

(b) The specific Accused Product(s) purchased, sampled, or ordered;

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S FIRST SET OF INTERROGATORIES TO DEFENDANT LUMOS PHOTONICS, INC.
(Interrogatory Nos. 1–25)
Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff"), by and through its attorneys of record, Calderwood & Harkness LLP, hereby propounds the following First Set of Interrogatories (Nos. 1–25) to Defendant Lumos Photonics, Inc. ("Lumos" or "Defendant"), pursuant to Rules 26 and 33 of the Federal Rules of Civil Procedure, the Local Rules of the United States District Court for the Northern District of California, and the Patent Local Rules of the Northern District of California. Defendant is requested to answer each interrogatory separately and fully, in writing, under oath, in accordance with the Instructions and Definitions set forth below.
I. INSTRUCTIONS
Instruction No. 1 — Governing Rules. These interrogatories are propounded pursuant to Federal Rules of Civil Procedure 26 and 33, and the Local Rules of the United States District Court for the Northern District of California, including the Patent Local Rules. Each interrogatory shall be answered in conformity with the requirements of those Rules and any applicable orders of this Court.
Instruction No. 2 — Time for Response. Defendant shall serve its answers and objections to each interrogatory fully and under oath within thirty (30) days of service of these interrogatories, or within such other time as may be permitted by written agreement of the parties or by order of the Court. Responses shall be served on counsel for Plaintiff at the address set forth in the signature block below.
Instruction No. 3 — Duty to Supplement. Pursuant to Federal Rule of Civil Procedure 26(e), Defendant has a continuing obligation to supplement or correct its responses to these interrogatories in a timely manner if Defendant learns that a response is in some material respect incomplete or incorrect, and if the additional or corrective information has not otherwise been made known to Plaintiff during the discovery process or in writing. This duty of supplementation extends through the close of discovery and trial.
Instruction No. 4 — Identification of Persons. Where an interrogatory requests the identification of a person, Defendant shall provide the person's full legal name, current title or position, employer or business affiliation, and last known business address and telephone number. If any of this information is unknown to Defendant after the exercise of due diligence, Defendant shall so state and provide whatever partial information is available.
Instruction No. 5 — Identification of Documents. Where an interrogatory requests the identification of documents, Defendant shall provide a description sufficient to identify each responsive document, including the date of the document, the author(s) or originator(s), the recipient(s) or addressee(s), the general subject matter of the document, the type of document (e.g., memorandum, email, report, presentation), and the Bates number(s) or other production identifier if the document has been or will be produced in this action. If the document has not yet been produced, Defendant shall identify it with sufficient specificity to permit Plaintiff to request its production.
Instruction No. 6 — Responses Based on Information and Belief. If Defendant cannot answer any interrogatory fully after exercising due diligence to obtain the responsive information, Defendant shall so state, provide all information available to Defendant as of the date of the response, and describe in reasonable detail the efforts Defendant made to obtain the complete information. A response that an interrogatory "calls for information not in Defendant's possession" shall not be deemed a sufficient answer if Defendant has not undertaken reasonable efforts to obtain such information from persons or entities within Defendant's control or otherwise reasonably available to Defendant.
Instruction No. 7 — Objections. If Defendant objects to any interrogatory, in whole or in part, Defendant shall state the objection with specificity, including the legal basis for the objection. Notwithstanding any objection, Defendant shall answer the interrogatory to the extent that it is not objectionable. A general or boilerplate objection without specification shall not be deemed a valid objection. If Defendant objects to an interrogatory as overly broad or unduly burdensome, Defendant shall describe the specific burden and propose a reasonable alternative scope.
Instruction No. 8 — Privilege Claims. If Defendant withholds any information responsive to these interrogatories on the basis of attorney-client privilege, the work product doctrine, or any other privilege or protection, Defendant shall, consistent with Federal Rule of Civil Procedure 26(b)(5)(A), provide information sufficient to enable Plaintiff to evaluate the applicability of the privilege or protection claimed, including: (a) the nature of the information withheld; (b) the date of the communication or document; (c) the persons who made, sent, or received the communication; (d) the general subject matter of the information; and (e) the specific privilege or protection asserted.
Instruction No. 9 — Reference to Business Records. If Defendant elects to specify and produce business records in lieu of answering an interrogatory, as permitted by Federal Rule of Civil Procedure 33(d), the specification shall be made in sufficient detail to enable Plaintiff to locate and identify the responsive records as readily as could the responding party. This specification shall include, at a minimum, the identity and location of the records, the manner in which they are organized, and the specific records responsive to each interrogatory.
Instruction No. 10 — Scope. Unless otherwise expressly stated in a particular interrogatory, each interrogatory covers the period from January 1, 2016 to the present date. "Present" shall mean the date on which Defendant serves its response to these interrogatories.
II. DEFINITIONS
As used in these interrogatories, the following terms shall have the meanings set forth below. These definitions are intended to be read broadly, in accordance with the Federal Rules of Civil Procedure, and shall not be construed to narrow or limit the scope of any interrogatory.
Definition No. 1 — "Plaintiff" or "OWS" shall mean Optiwave Semiconductor Corp., a Delaware corporation, including its current and former officers, directors, employees, agents, consultants, subsidiaries, affiliates, predecessors, successors, and assigns.
Definition No. 2 — "Defendant" or "Lumos" shall mean Lumos Photonics, Inc., a Delaware corporation, including its current and former officers, directors, employees, agents, consultants, subsidiaries, affiliates, predecessors, successors, and assigns, including but not limited to any operations, divisions, or facilities located at 9400 McNeil Drive, Building 7, Austin, TX 78758; 4750 Great America Parkway, Suite 320, Santa Clara, CA 95054; and 3200 NE Shute Road, Hillsboro, OR 97124, as well as any other domestic or international facilities at which the Accused Products are or were designed, developed, manufactured, tested, or sold.
Definition No. 3 — "Accused Products" shall mean the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver, including all versions, variants, configurations, engineering samples, prototypes, development samples, alpha and beta units, pre-production units, and successor products thereof, regardless of model number, revision, or designation, and including all components and subassemblies thereof that are alleged to practice one or more claims of the Patents-in-Suit.
Definition No. 4 — "Patents-in-Suit" shall mean: (a) U.S. Patent No. 10,234,567 (hereinafter "the '567 Patent"); (b) U.S. Patent No. 10,891,234 (hereinafter "the '234 Patent"); (c) U.S. Patent No. 11,045,678 (hereinafter "the '678 Patent"); and (d) U.S. Patent No. 11,312,890 (hereinafter "the '890 Patent"), including all claims, specifications, drawings, and prosecution histories thereof.
Definition No. 5 — "Person" shall mean any natural person, corporation, partnership, joint venture, limited liability company, association, trust, governmental entity, agency, or instrumentality, or any other legal entity.
Definition No. 6 — "Document" or "Documents" shall have the broadest meaning ascribed under Federal Rule of Civil Procedure 34(a) and Federal Rule of Evidence 1001, and shall include, without limitation, all writings, drawings, graphs, charts, photographs, audio and video recordings, and any other data compilation from which information can be obtained, including all electronically stored information ("ESI") such as emails, word processing documents, spreadsheets, databases, presentations, instant messages, text messages, voicemail recordings, and metadata associated therewith, in any medium or format.
Definition No. 7 — "Communication" shall mean any oral, written, or electronic transmission of information between two or more persons, including but not limited to emails, letters, memoranda, facsimiles, text messages, instant messages, Meridian Solutions or Northgate Data Systems messages, telephone calls, voicemail messages, video conferences, and in-person conversations.
Definition No. 8 — "Identify" (with respect to persons) shall mean to provide the full legal name, current title or position, current employer or business affiliation, last known business address, and last known telephone number of the person identified.
Definition No. 9 — "Identify" (with respect to documents) shall mean to provide the date of the document, the name(s) of the author(s) or originator(s), the name(s) of the recipient(s) or addressee(s), the type of document (e.g., email, memorandum, report, drawing, specification), the general subject matter, and the Bates number(s) or other production identifier if the document has been or will be produced in this action.
Definition No. 10 — "Relate to" or "Relating to" shall mean concerning, referring to, describing, evidencing, constituting, reflecting, pertaining to, connected with, commenting on, responsive to, having a logical connection with, or being relevant to, in whole or in part, directly or indirectly.
Definition No. 11 — "You" or "Your" shall mean Defendant Lumos Photonics, Inc. as defined in Definition No. 2 above.
Definition No. 12 — "Prior Art" shall mean any patent, published patent application, printed publication, public use, sale, offer for sale, or other activity or disclosure that may be relevant to the validity of any claim of any of the Patents-in-Suit under 35 U.S.C. §§ 102 or 103, including prior art arising under any applicable version of those statutes (pre-AIA or AIA, as applicable to each Patent-in-Suit).
Definition No. 13 — "POSITA" shall mean a person of ordinary skill in the art, as that term is understood in patent law, having the education, experience, and knowledge that would be attributed to such a person at the relevant time period for each Patent-in-Suit.
III. INTERROGATORIES
INTERROGATORY NO. 1:
State in detail all facts, grounds, and bases supporting Defendant's contention that the Accused Products do not infringe any asserted claim of U.S. Patent No. 10,234,567 ("the '567 Patent"), specifically Claims 1, 4, 7, 12, and 15 thereof, including but not limited to the following:
(a) Defendant's identification of each limitation of each asserted claim of the '567 Patent that Defendant contends is not met by any Accused Product;
(b) A detailed explanation of why Defendant contends each such limitation is not met, including all technical and factual bases for that contention;
(c) Identification of each person with knowledge of the facts supporting Defendant's non-infringement contentions;
(d) Identification of all documents supporting Defendant's non-infringement contentions with respect to the '567 Patent.
Defendant's response shall include contentions regarding both literal infringement and infringement under the doctrine of equivalents. Defendant shall specifically address the "adiabatically coupled" limitation recited in the asserted claims and shall explain in detail why the LumosBridge™ segmented taper design does or does not satisfy that limitation under any proposed claim construction, including any construction proposed in Defendant's claim construction brief. If Defendant contends that the segmented taper design is structurally or functionally distinct from an adiabatic coupler as that term is used in the '567 Patent specification and prosecution history, Defendant shall set forth all facts and technical bases supporting that contention.
INTERROGATORY NO. 2:
State in detail all facts, grounds, and bases supporting Defendant's contention that the Accused Products do not infringe any asserted claim of U.S. Patent No. 10,891,234 ("the '234 Patent"), specifically Claims 1, 3, 5, 8, and 11 thereof, including but not limited to the following:
(a) Identification of each limitation of each asserted claim of the '234 Patent that Defendant contends is not met by any Accused Product;
(b) A detailed explanation of why Defendant contends each such limitation is not met, including all technical and factual bases for that contention;
(c) Identification of each person with knowledge of the facts supporting Defendant's non-infringement contentions;
(d) Identification of all documents supporting Defendant's non-infringement contentions with respect to the '234 Patent.
Defendant shall specifically address the "graded buffer layer having a continuously varying germanium concentration" limitation recited in the asserted claims. Defendant shall explain in detail the relationship of Defendant's step-graded SiGe buffer design—which Plaintiff understands to include four discrete composition steps at germanium fractions of approximately 0.25, 0.50, 0.75, and 1.0—to that limitation. If Defendant contends that a step-graded buffer with four discrete composition steps does not satisfy the "continuously varying" language either literally or under the doctrine of equivalents, Defendant shall set forth all facts, technical bases, and expert opinions supporting that contention.
INTERROGATORY NO. 3:
State in detail all facts, grounds, and bases supporting Defendant's contention that the Accused Products do not infringe any asserted claim of U.S. Patent No. 11,045,678 ("the '678 Patent"), specifically Claims 1, 2, 6, 9, and 14 thereof, including but not limited to the following:
(a) Identification of each limitation of each asserted claim of the '678 Patent that Defendant contends is not met by any Accused Product;
(b) A detailed explanation of why Defendant contends each such limitation is not met, including all technical and factual bases for that contention;
(c) Identification of each person with knowledge of the facts supporting Defendant's non-infringement contentions;
(d) Identification of all documents supporting Defendant's non-infringement contentions with respect to the '678 Patent.
Defendant shall specifically address the limitation "integrated wavelength-division multiplexing element monolithically formed on a single silicon die" recited in the asserted claims. Defendant shall explain in detail how the LumosBridge™ 800G Optical Engine platform utilizes micro-transfer-printed III-V gain elements bonded to the silicon photonic integrated circuit and whether Defendant contends that this architecture does not constitute a WDM element "monolithically formed on a single silicon die" either literally or under the doctrine of equivalents. Defendant's response shall include all facts and technical bases supporting any such contention, including any distinction Defendant draws between monolithic integration and heterogeneous or hybrid integration approaches.
INTERROGATORY NO. 4:
State in detail all facts, grounds, and bases supporting Defendant's contention that the Accused Products do not infringe any asserted claim of U.S. Patent No. 11,312,890 ("the '890 Patent"), specifically Claims 1, 5, 8, and 13 thereof, including but not limited to the following:
(a) Identification of each limitation of each asserted claim of the '890 Patent that Defendant contends is not met by any Accused Product;
(b) A detailed explanation of why Defendant contends each such limitation is not met, including all technical and factual bases for that contention;
(c) Identification of each person with knowledge of the facts supporting Defendant's non-infringement contentions;
(d) Identification of all documents supporting Defendant's non-infringement contentions with respect to the '890 Patent.
Defendant shall specifically address the "pre-emphasis equalization stage electrically co-integrated with the modulator on a common substrate" limitation recited in the asserted claims. Defendant shall explain in detail the design of Defendant's CMOS driver die and its interconnection to the silicon photonic modulator die, including but not limited to whether Defendant uses a separate CMOS driver die flip-chip bonded to the silicon photonic modulator die via copper pillar micro-bumps. If Defendant contends that such an architecture does not satisfy the "electrically co-integrated ... on a common substrate" limitation either literally or under the doctrine of equivalents, Defendant shall set forth all facts, technical bases, and design documentation supporting that contention.
INTERROGATORY NO. 5:
For each asserted claim of each Patent-in-Suit that Defendant contends is invalid under 35 U.S.C. § 102 (anticipation), provide the following information:
(a) Identification of each prior art reference relied upon by Defendant, including the title, author(s) or inventor(s), date of publication or issuance, patent number or publication number, and any other identifying information;
(b) The specific subsection of 35 U.S.C. § 102 under which each prior art reference is asserted (e.g., § 102(a)(1), § 102(a)(2), or the corresponding pre-AIA subsection, as applicable);
(c) A claim-by-claim, limitation-by-limitation mapping of each prior art reference to each asserted claim that Defendant contends is anticipated, identifying the specific portions of the prior art reference (by column, line, figure, or paragraph) that correspond to each limitation;
(d) The effective date of each prior art reference as Defendant contends it should be determined;
(e) Identification of each person with knowledge of the facts supporting Defendant's anticipation contentions;
(f) Identification of all documents supporting Defendant's anticipation contentions.
Defendant's response shall include, but need not be limited to, contentions based on: U.S. Patent No. 9,456,012 to Tanaka et al., issued September 6, 2016 ("Tanaka"); and European Patent Application EP 3,234,567 A1 to Nordlicht Photonische GmbH, published August 2, 2017 ("Nordlicht"). If Defendant relies upon additional prior art references for anticipation, Defendant shall provide the same information for each such reference.
INTERROGATORY NO. 6:
For each asserted claim of each Patent-in-Suit that Defendant contends is invalid under 35 U.S.C. § 103 (obviousness), provide the following information:
(a) Identification of each prior art reference or combination of references relied upon by Defendant, including the title, author(s) or inventor(s), date of publication or issuance, and any other identifying information;
(b) The motivation, suggestion, or reason to combine the identified references, including any teaching in the references themselves, the general knowledge of a POSITA, market demands, or design incentives;
(c) A claim-by-claim, limitation-by-limitation mapping of the prior art reference(s) to each asserted claim that Defendant contends is obvious, identifying the specific portions of each reference (by column, line, figure, or paragraph) that teach or suggest each limitation;
(d) The level of ordinary skill in the art as Defendant contends it should be defined, including the educational background, years of experience, and specific areas of technical knowledge attributed to a POSITA;
(e) Identification of each person with knowledge of the facts supporting Defendant's obviousness contentions;
(f) Identification of all documents supporting Defendant's obviousness contentions, including any expert reports or analyses.
Defendant's response shall include, but need not be limited to, contentions based on: Chen & Liu, "Segmented Taper Coupler Design for Low-Loss Fiber-to-Chip Coupling," Journal of Photonic Integration, Vol. 14, No. 3, pp. 217–229 (2016) ("Chen & Liu"); and Iyer & Patel, "Co-Design of Modulator Drivers and Silicon Photonic Mach-Zehnder Structures," IEEE Transactions on Circuits and Systems, Vol. 65, No. 8, pp. 2701–2713 (2018) ("Iyer & Patel"). If Defendant relies upon additional references or combinations, Defendant shall provide the same information for each such reference or combination. Defendant shall also identify any secondary considerations of nonobviousness (e.g., commercial success, long-felt need, failure of others, unexpected results, copying, or skepticism) that Defendant contends are relevant, and shall explain why Defendant contends such secondary considerations do not support validity.
INTERROGATORY NO. 7:
For each asserted claim of each Patent-in-Suit that Defendant contends is invalid under 35 U.S.C. § 112, including but not limited to invalidity based on failure to comply with the written description requirement (§ 112(a)), lack of enablement (§ 112(a)), indefiniteness (§ 112(b)), or any other basis under § 112, provide the following information:
(a) The specific subsection of 35 U.S.C. § 112 and the ground of invalidity asserted (e.g., written description, enablement, indefiniteness, means-plus-function);
(b) The specific claim term(s) or limitation(s) at issue for each ground of invalidity;
(c) All facts supporting Defendant's contention, including any technical or scientific evidence;
(d) Identification of each person with knowledge of the facts supporting Defendant's contentions under § 112;
(e) Identification of all documents supporting Defendant's § 112 contentions.
If Defendant contends that any claim term is a means-plus-function limitation under § 112(f), Defendant shall identify the claimed function and the corresponding structure, material, or acts disclosed in the specification, and shall explain whether Defendant contends that the specification fails to disclose adequate corresponding structure.
INTERROGATORY NO. 8:
Identify each argument or position Defendant intends to assert based on prosecution history estoppel with respect to any Patent-in-Suit, including the following:
(a) The specific patent and claim(s) to which the prosecution history estoppel defense applies;
(b) The specific amendment to the claims or argument made by the patentee during prosecution of the patent before the United States Patent and Trademark Office;
(c) The prior art reference or office action rejection to which the amendment or argument was made in response;
(d) The scope of subject matter Defendant contends was surrendered by the patentee as a result of the amendment or argument, including the specific equivalent(s) that Defendant contends fall within the surrendered territory;
(e) Identification of all documents supporting Defendant's prosecution history estoppel contentions, including specific citations to the prosecution history file.
Defendant shall specifically address any prosecution history estoppel arising from: (i) the addition of the term "adiabatically coupled" to the claims of the '567 Patent during prosecution to overcome or distinguish U.S. Patent No. 9,456,012 to Tanaka et al.; and (ii) the addition of the term "monolithically formed" to the claims of the '678 Patent during prosecution to overcome or distinguish hybrid integration prior art. Defendant shall explain in detail what subject matter Defendant contends was surrendered by each such amendment and why Defendant contends that the Accused Products fall outside the scope of the claims as properly limited by such estoppel.
INTERROGATORY NO. 9:
Identify all persons involved in the design, development, engineering, testing, validation, qualification, and commercialization of the LumosBridge™ 800G Optical Engine, including but not limited to engineers, scientists, designers, managers, directors, vice presidents, and other executives who participated in or supervised any aspect of the product's development from initial conception through commercial release. For each such person, provide the following information:
(a) Full name;
(b) Title or position held at the time of their involvement;
(c) A description of their role in the project and specific contributions;
(d) The approximate dates of their involvement;
(e) Current employer and business address (to the extent known to Defendant).
INTERROGATORY NO. 10:
Identify all persons involved in the design, development, engineering, testing, validation, qualification, and commercialization of the LumosEdge™ 400ZR+ Pluggable Transceiver, including but not limited to engineers, scientists, designers, managers, directors, vice presidents, and other executives who participated in or supervised any aspect of the product's development from initial conception through commercial release. For each such person, provide the following information:
(a) Full name;
(b) Title or position held at the time of their involvement;
(c) A description of their role in the project and specific contributions;
(d) The approximate dates of their involvement;
(e) Current employer and business address (to the extent known to Defendant).
INTERROGATORY NO. 11:
Describe in detail the waveguide coupling architecture used in each Accused Product, including but not limited to the following:
(a) Whether the coupling design uses a continuous taper, a segmented taper, an inverse taper, a grating coupler, or any other coupling mechanism, and if multiple mechanisms are used, a description of each;
(b) The tip width of any tapered waveguide elements at their narrowest point, as well as the starting width and the overall taper length;
(c) The materials used in the waveguide core and cladding layers (e.g., silicon, silicon nitride, silicon oxynitride, or other materials), including the specific refractive indices at the operating wavelength;
(d) Whether the coupling is adiabatic or non-adiabatic in nature, including the basis for that characterization and any simulation or measurement data supporting the characterization;
(e) Identification of all design documents, specifications, simulation results (including mode-solver and BPM simulations), mask layout files, and testing reports relating to the waveguide coupling design of each Accused Product.
INTERROGATORY NO. 12:
Describe in detail the germanium-on-silicon photodetector architecture used in each Accused Product, including but not limited to the following:
(a) The structure and composition of any buffer layer between the silicon substrate (or silicon waveguide layer) and the germanium absorber, including the material system used (e.g., SiGe, pure Ge seed, or other);
(b) Whether the buffer layer is continuously graded (i.e., with a germanium concentration that varies smoothly as a function of thickness), step-graded (i.e., with discrete layers of fixed germanium concentration), or of any other configuration;
(c) The specific germanium concentration (expressed as a mole fraction or percentage) at each point or step in the buffer layer, and the thickness of each discrete layer or the grading profile of any continuously varying layer;
(d) The total thickness of the germanium absorber layer and any cap or contact layers above the absorber;
(e) Identification of all design documents, epitaxial growth specifications, process flow documents, characterization data (including XRD, TEM, and responsivity measurements), and any other documents relating to the photodetector design of each Accused Product.
INTERROGATORY NO. 13:
Describe in detail the wavelength-division multiplexing ("WDM") integration approach used in the LumosBridge™ 800G Optical Engine, including but not limited to the following:
(a) Whether the WDM element (including any arrayed waveguide grating, echelle grating, ring resonator filter, or other wavelength-selective element) is monolithically formed on a single silicon die, or is formed using heterogeneous integration, hybrid integration, flip-chip bonding, micro-transfer printing, or any other integration technique;
(b) The materials and process steps used to form the WDM element, including any lithographic, etching, deposition, bonding, or epitaxial growth steps;
(c) Whether any III-V semiconductor gain elements (e.g., InP-based or GaAs-based laser diodes or semiconductor optical amplifiers) are bonded, transferred, or otherwise attached to the silicon photonic integrated circuit, and if so, the method of attachment and the materials involved;
(d) Identification of all design documents, process flow specifications, mask layout files, and performance characterization data relating to the WDM integration approach.
INTERROGATORY NO. 14:
Describe in detail the modulator driver circuit architecture used in each Accused Product, including but not limited to the following:
(a) Whether the pre-emphasis equalization stage (or any equalization, feed-forward equalization, or pre-distortion circuit) is fabricated on the same substrate as the Mach-Zehnder modulator or on a separate die;
(b) The interconnection method between the driver circuit and the Mach-Zehnder modulator, including whether the connection is made by wire bonding, flip-chip bonding via copper pillar micro-bumps, solder bumps, through-silicon vias (TSVs), an interposer, package-level routing, or any other interconnection technology;
(c) The semiconductor process technology used for the driver die, including the CMOS technology node (e.g., 28 nm, 16 nm, 7 nm), foundry, and any design-specific modifications or characterizations;
(d) Identification of all design documents, circuit schematics, layout files (e.g., GDSII), simulation results, and product specifications relating to the modulator driver architecture of each Accused Product.
INTERROGATORY NO. 15:
State the total revenue, in United States dollars, generated by Defendant from the sale, license, lease, or other commercial disposition of the LumosBridge™ 800G Optical Engine for each of the following periods:
(a) Q1 2022 (January 1, 2022 through March 31, 2022), which Plaintiff understands to coincide with the first commercial shipments to customers;
(b) Q2 2022 (April 1, 2022 through June 30, 2022);
(c) Q3 2022 (July 1, 2022 through September 30, 2022);
(d) Q4 2022 (October 1, 2022 through December 31, 2022);
(e) Full calendar year 2022 (January 1, 2022 through December 31, 2022);
(f) Q1 2023 through the date of Defendant's response to these interrogatories.
For each period identified above, state the number of units of the LumosBridge™ 800G Optical Engine sold and the average selling price per unit. Identify the unit price range for different configurations or variants of the product, including but not limited to any pricing differences based on data rate, wavelength count, or packaging options. Additionally, identify any revenue attributable to customers or end users located in the Northern District of California, including but not limited to customers headquartered or with principal offices in San Jose, Santa Clara, Sunnyvale, Mountain View, Palo Alto, or other cities within the district.
INTERROGATORY NO. 16:
State the total revenue, in United States dollars, generated by Defendant from the sale, license, lease, or other commercial disposition of the LumosEdge™ 400ZR+ Pluggable Transceiver for each of the following periods:
(a) Q3 2021 (July 1, 2021 through September 30, 2021), which Plaintiff understands to coincide with the commencement of production;
(b) Q4 2021 (October 1, 2021 through December 31, 2021);
(c) Q1 2022 (January 1, 2022 through March 31, 2022);
(d) Q2 2022 (April 1, 2022 through June 30, 2022);
(e) Q3 2022 (July 1, 2022 through September 30, 2022);
(f) Q4 2022 (October 1, 2022 through December 31, 2022);
(g) Full calendar year 2022 (January 1, 2022 through December 31, 2022);
(h) Q1 2023 through the date of Defendant's response to these interrogatories.
For each period identified above, state the number of units of the LumosEdge™ 400ZR+ Pluggable Transceiver sold and the average selling price per unit. Identify the unit price range for different configurations or variants, including but not limited to any pricing differences based on reach, tunable wavelength range, or form factor. Additionally, identify any revenue attributable to customers or end users located in the Northern District of California.
INTERROGATORY NO. 17:
Confirm or deny that the combined revenue from the Accused Products (i.e., the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver) for calendar year 2022 (January 1, 2022 through December 31, 2022) was approximately One Hundred Forty-Eight Million Six Hundred Thousand Dollars ($148,600,000). If Defendant denies that the combined revenue was approximately $148.6 million, state the correct combined revenue figure for that period and provide a detailed explanation of the basis for any discrepancy between Plaintiff's estimate and Defendant's figure, including identification of all supporting documents, accounting records, and financial statements.
INTERROGATORY NO. 18:
For each Accused Product (the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver), state the gross profit margin and operating profit margin for each fiscal quarter in calendar year 2022 (Q1 through Q4), including a breakdown of the following components used in calculating those margins:
(a) Total revenue for the product in each quarter;
(b) Cost of goods sold ("COGS"), including direct material costs, direct labor costs, and manufacturing overhead;
(c) Gross profit (revenue less COGS);
(d) Gross profit margin (gross profit divided by revenue, expressed as a percentage);
(e) Direct operating expenses attributable to the product, including research and development expenses, sales and marketing expenses, and general and administrative expenses, to the extent allocated;
(f) Allocated indirect costs, including the methodology used to allocate such costs;
(g) Operating profit (gross profit less operating expenses);
(h) Operating profit margin (operating profit divided by revenue, expressed as a percentage).
Identify all supporting documents, including internal financial reports, cost accounting records, and product line profitability analyses.
INTERROGATORY NO. 19:
State when Defendant first became aware of each Patent-in-Suit (U.S. Patent Nos. 10,234,567; 10,891,234; 11,045,678; and 11,312,890), including the following information for each patent:
(a) The date on which Defendant first became aware of the patent;
(b) The circumstances under which Defendant became aware, including whether awareness arose from a patent search, publication, communication from Plaintiff, communication from a third party, litigation, or other means;
(c) The identity of the person(s) within Defendant's organization who first became aware of the patent, and the identity of any person(s) to whom that awareness was subsequently communicated;
(d) Any actions taken by Defendant in response to becoming aware of the patent, including but not limited to: obtaining opinions of counsel regarding non-infringement, invalidity, or freedom to operate; initiating or modifying design-around efforts; conducting prior art searches; revising product designs or specifications; or engaging in any internal discussions or analyses regarding the patent;
(e) Identification of all documents reflecting Defendant's awareness of each patent or any responsive actions taken, including internal emails, memoranda, meeting minutes, and presentations.
Defendant shall specifically address its receipt of the cease-and-desist letter from Plaintiff Optiwave Semiconductor Corp. dated March 15, 2022, including the date of receipt, the person(s) who received and reviewed the letter, and all actions taken in response thereto.
INTERROGATORY NO. 20:
State whether Defendant obtained any opinion of counsel—including any formal written opinion, informal oral advice, draft opinion, or legal memorandum—regarding any of the following subjects:
(a) Non-infringement of any claim of any Patent-in-Suit by any Accused Product;
(b) Invalidity of any claim of any Patent-in-Suit;
(c) Freedom to operate with respect to any Accused Product in view of any Patent-in-Suit or any related patent or patent application.
If any such opinion was obtained, identify: (i) the date of each opinion or advice; (ii) the attorney or law firm providing the opinion; (iii) the specific patent(s) and claims addressed; and (iv) whether the opinion was oral or written. Plaintiff does not at this time seek production of the substance of privileged attorney-client communications but seeks identification of the existence of such opinions for purposes of evaluating Defendant's state of mind and any affirmative defense of reliance on advice of counsel, if asserted. If Defendant intends to rely on an advice-of-counsel defense at trial, Defendant shall so state.
INTERROGATORY NO. 21:
Identify all prior art searches conducted by or on behalf of Defendant relating to any Patent-in-Suit or to the technology covered thereby, including but not limited to searches relating to waveguide coupling, germanium-on-silicon photodetectors, wavelength-division multiplexing integration on silicon, and modulator driver co-integration. For each search, provide the following:
(a) The date or date range of the search;
(b) The person or entity that conducted the search, including whether the search was performed internally by Defendant's employees or externally by a third-party search firm, patent agent, or law firm;
(c) The scope of the search, including the subject matter and technology area covered;
(d) The databases or sources searched (e.g., USPTO, EPO, WIPO, Severin Industries Patents, IEEE Xplore, Pemberton Data Systems, technical journals);
(e) The prior art references identified as a result of the search;
(f) Identification of all documents reflecting the results of such searches, including search reports, summaries, and any analyses of the identified references.
INTERROGATORY NO. 22:
Identify all third-party suppliers, contract manufacturers, foundries, and fabrication facilities involved in the manufacture, fabrication, assembly, testing, or packaging of any component or subassembly of any Accused Product. This interrogatory encompasses, without limitation, suppliers and fabricators of silicon photonic integrated circuits, germanium-on-silicon photodetectors, III-V semiconductor gain elements, driver integrated circuits, transimpedance amplifier integrated circuits, optical fiber arrays, lens assemblies, and packaging components. For each third-party entity, provide the following:
(a) The full legal name and business address of the entity;
(b) The specific component(s) or subassembly(ies) supplied, fabricated, or assembled by that entity;
(c) The process technology used (e.g., CMOS node for driver ICs, SOI platform for silicon photonics, MOCVD for III-V epitaxial growth);
(d) The dates of Defendant's relationship with the entity as it relates to the Accused Products;
(e) Whether the entity performed any design, development, or engineering services in addition to manufacturing.
INTERROGATORY NO. 23:
Identify all customers that have purchased, received evaluation or engineering samples of, or placed orders for any Accused Product, including but not limited to hyperscale data center operators, cloud service providers, telecommunications companies, network equipment manufacturers, and system integrators. For each customer, provide the following:
(a) The full legal name and business address of the customer;
(b) The specific Accused Product(s) purchased, sampled, or ordered;
(c) The quantities purchased, sampled, or ordered, broken down by quarter for calendar year 2022;
(d) The total revenue received from that customer for each Accused Product for calendar year 2022;
(e) Whether the customer is headquartered in or maintains principal operations, data center facilities, or network points of presence within the Northern District of California.
Defendant's response should enable Plaintiff to evaluate the basis for Plaintiff's contention that approximately twenty-two percent (22%) of Defendant's United States revenue from the Accused Products is derived from customers in this judicial district, which is relevant to establishing personal jurisdiction and venue, as well as to damages calculations.
INTERROGATORY NO. 24:
Identify all license agreements, cross-license agreements, covenant-not-to-sue agreements, settlement agreements involving a license, or similar arrangements between Defendant and any third party relating to silicon photonics patents or technology, including but not limited to agreements covering waveguide coupling technology, germanium-on-silicon photodetector technology, wavelength-division multiplexing integration technology, or modulator driver technology. For each such agreement, provide:
(a) The identities of all parties to the agreement;
(b) The effective date and term (including any renewal or extension provisions);
(c) The patent(s) or technology licensed or covered by the agreement;
(d) The royalty rate (whether running royalty, fixed per-unit royalty, or percentage of revenue), lump-sum payment, or other financial terms;
(e) Any limitations on the scope of the license, including field-of-use restrictions, territorial restrictions, or volume caps;
(f) Identification of the agreement by title, date, and Bates number if produced or to be produced.
These agreements are sought as comparable licenses relevant to the reasonable royalty analysis under Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970), and its progeny. If Defendant contends that any such agreement is not comparable for purposes of a reasonable royalty analysis, Defendant shall state the basis for that contention.
INTERROGATORY NO. 25:
State all facts, grounds, and bases on which Defendant intends to contest Plaintiff's claimed damages in this action, including but not limited to the following:
(a) The appropriate royalty base, including whether Defendant contends that the royalty base should be limited to a component of the Accused Products rather than the entire product, and if so, which component and why;
(b) The appropriate royalty rate, including any rate Defendant contends would constitute a reasonable royalty under 35 U.S.C. § 284 and the factual basis for any proposed rate;
(c) The applicability or inapplicability of any factor identified in Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970), and the factual basis for Defendant's position on each such factor;
(d) Any apportionment analysis or smallest-salable-patent-practicing-unit ("SSPPU") analysis that Defendant contends should be applied to limit the damages calculation, including the identity of the smallest salable unit, the value attributable to the patented feature(s), and the analytical methodology;
(e) Any contention that the commercial success of the Accused Products is attributable to non-patented features, including identification of each such feature and the basis for Defendant's contention that customer demand is driven by those features rather than by the patented technology;
(f) The identity of any damages expert retained or to be retained by Defendant, including Dr. Patricia Moreno of Compass Forensic Accounting LLP, if applicable, or any other expert, and the subject matter on which each expert is expected to testify;
(g) Identification of all documents supporting Defendant's damages contentions, including financial analyses, market studies, customer surveys, and expert reports.
Respectfully submitted,
CALDERWOOD & HARKNESS LLP
By: ________
Alan Ngo California State Bar No. 247893 U.S. Patent and Trademark Office Reg. No. 52,871 Partner, intellectual Property Litigation Group
CALDERWOOD & HARKNESS LLP One Embarcadero Center, 34th Floor San Francisco, California 94111 Telephone: (415) 773-5600 Facsimile: (415) 773-5601
Email: ango@calderwoodharkness.com
Omar Siddiqui California State Bar No. 301456
Email: osiddiqui@calderwoodharkness.com
Christy Bauer California State Bar No. 318742
Email: cbauer@calderwoodharkness.com
Attorneys for Plaintiff Optiwave Semiconductor Corp.
Dated: November 21, 2022
CERTIFICATE OF SERVICE
I, Omar Siddiqui, hereby certify that on November 21, 2022, I caused a true and correct copy of the foregoing PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S FIRST SET OF INTERROGATORIES TO DEFENDANT LUMOS PHOTONICS, INC. (Nos. 1–25) to be served on counsel for Defendant via electronic mail and the Court's CM/ECF electronic filing system, addressed to the following:
Victoria "Tori" Ashworth Brannick Howell & Stein LLP 555 California Street, Suite 2800 San Francisco, California 94104
Email: tashworth@brannickhowell.com
Daniel Kowalski Brannick Howell & Stein LLP 555 California Street, Suite 2800 San Francisco, California 94104
Email: dkowalski@brannickhowell.com
Counsel for Defendant Lumos Photonics, Inc.
By: ________
Omar Siddiqui CALDERWOOD & HARKNESS LLP
OPTIWAVE SEMICONDUCTOR CORP., a Delaware corporation, | Case No. 5:22-cv-03417-EJD
Plaintiff, | Hon. Edward J. Torvelis
v.
LUMOS PHOTONICS, INC., a Delaware corporation,
Defendant.

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

I. INSTRUCTIONS

II. DEFINITIONS

III. INTERROGATORIES

INTERROGATORY NO. 1:

INTERROGATORY NO. 2:

INTERROGATORY NO. 3:

INTERROGATORY NO. 4:

INTERROGATORY NO. 5:

INTERROGATORY NO. 6:

INTERROGATORY NO. 7:

INTERROGATORY NO. 8:

INTERROGATORY NO. 9:

INTERROGATORY NO. 10:

INTERROGATORY NO. 11:

INTERROGATORY NO. 12:

INTERROGATORY NO. 13:

INTERROGATORY NO. 14:

INTERROGATORY NO. 15:

INTERROGATORY NO. 16:

INTERROGATORY NO. 17:

INTERROGATORY NO. 18:

INTERROGATORY NO. 19:

INTERROGATORY NO. 20:

INTERROGATORY NO. 21:

INTERROGATORY NO. 22:

INTERROGATORY NO. 23:

Record

Parties

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