1014-00003 · Optiwave Semiconductor Corp · Fact Discovery

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UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

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

PRELIMINARY STATEMENT

Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff"), by and through its undersigned counsel, Calderwood & Harkness LLP, hereby serves its Responses and Objections to Defendant Lumos Photonics, Inc.'s ("Lumos" or "Defendant") First Set of Interrogatories ("Interrogatories"), pursuant to Rules 26 and 33 of the Federal Rules of Civil Procedure. Lumos served its First Set of Interrogatories, together with its First Set of Requests for Production of Documents containing ninety-eight (98) separate requests, on or about November 7, 2022. These Responses and Objections are timely served as of the date set forth below, in December 2022.

These Responses and Objections are based upon the information and documents reasonably available to OWS at this time and are made without prejudice to, and are not a waiver of, OWS's right to present any additional or newly discovered evidence or information at trial, in dispositive motion practice, or in any other proceedings in this action. OWS's investigation of the facts related to this action is ongoing. Discovery is still in its early stages; fact and expert discovery have not been completed. OWS expressly reserves the right to supplement, amend, or correct these Responses and Objections as additional facts become known or as circumstances warrant, pursuant to Rule 26(e) of the Federal Rules of Civil Procedure.

Nothing in these Responses and Objections shall be deemed an admission of the relevance, materiality, or admissibility of any information provided herein. No response herein shall be construed as an admission or concession regarding any matter of law or fact, nor shall any response be construed as a waiver of any objection, right, or privilege.

These Responses and Objections have been prepared by Calderwood & Harkness LLP, One Embarcadero Center, 34th Floor, San Francisco, CA 94111, counsel of record for OWS.

Matter Number: 1014-00003

GENERAL OBJECTIONS

OWS interposes the following General Objections to Lumos's First Set of Interrogatories. Each General Objection is incorporated by reference into each Specific Response set forth below as though fully restated therein. The assertion of a General Objection does not waive or preclude any other objection that may be applicable to a particular Interrogatory, nor does it constitute an admission that any particular Interrogatory is proper or calls for discoverable information.

1. Scope and Proportionality. OWS objects to each and every Interrogatory to the extent it seeks information that is not proportional to the needs of this case under Rule 26(b)(1) of the Federal Rules of Civil Procedure, considering the importance of the issues at stake in this action, the amount in controversy (which exceeds $75 million), the parties' relative access to relevant information, the importance of the discovery sought in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit. OWS further objects to each Interrogatory to the extent it is overbroad in temporal scope, geographic scope, or subject matter scope, or to the extent it seeks information that is neither relevant to any party's claim or defense nor proportional to the needs of the case.

2. Attorney-Client Privilege and Work Product Protection. OWS objects to each and every Interrogatory to the extent it calls for, or its answer would require disclosure of, information or communications protected by the attorney-client privilege, the work product doctrine, or any other applicable privilege or immunity from discovery, including but not limited to the joint defense privilege, the common interest doctrine, and the deliberative process privilege. Any inadvertent disclosure of privileged or protected information in these Responses shall not constitute a waiver of any privilege or protection, consistent with Federal Rule of Evidence 502 and the parties' agreements regarding inadvertent production. OWS has endeavored to identify and withhold or redact privileged material, and no response herein shall be deemed a waiver of any applicable privilege or protection.

3. Premature Contention Interrogatories. OWS objects to each Interrogatory that constitutes a contention interrogatory under Rule 33(a)(2) to the extent such Interrogatory is premature given the current stage of this litigation. The parties are presently engaged in the claim construction phase of this case, and a Markman hearing has been scheduled for January 30, 2023 before the Honorable Edward J. Torvelis. Many of the Interrogatories propounded by Lumos call upon OWS to articulate its infringement theories, claim construction positions, and damages methodologies in a manner that is necessarily informed by, and will evolve following, the Court's claim construction ruling. OWS expressly reserves the right to supplement and amend its responses to contention interrogatories as discovery progresses, after claim construction is resolved, and as OWS's expert analyses are developed and finalized.

4. Ongoing Investigation. OWS's investigation into the facts and circumstances underlying this action is ongoing. Neither fact discovery nor expert discovery has been completed, and OWS has not yet had the opportunity to review and analyze the full universe of documents and information that Lumos has produced or will produce in this litigation. OWS's Responses are based on information currently known and reasonably available. OWS expressly reserves the right to supplement, amend, or correct these Responses in accordance with its continuing obligations under Rule 26(e) of the Federal Rules of Civil Procedure, as OWS's investigation continues and as additional documents and information are obtained through the discovery process.

5. Construction of Claim Terms. OWS objects to each Interrogatory to the extent it assumes, incorporates, or relies upon definitions of patent claim terms or claim constructions that are disputed between the parties and that are the subject of pending claim construction proceedings before the Court. The parties have submitted competing proposed claim constructions for multiple terms in the asserted claims. OWS answers each Interrogatory based upon its own proposed claim constructions as set forth in OWS's Preliminary Claim Construction Contentions served on September 12, 2022, and OWS's Responsive Claim Construction Contentions served on October 3, 2022. OWS does not, by answering any Interrogatory, adopt, concede, or acquiesce to any claim construction proposed by Lumos. OWS expressly reserves the right to amend its Responses to conform with the Court's claim construction ruling once entered.

6. Confidentiality. OWS objects to each and every Interrogatory to the extent that a full and complete response would require disclosure of confidential, proprietary, or trade secret business information of OWS or third parties beyond the protections afforded by the Stipulated Protective Order entered by the Court on September 19, 2022 (Dkt. No. 42). OWS will provide confidential information in accordance with the terms of the Stipulated Protective Order and will designate such information at the appropriate confidentiality level (including "Highly Confidential — Attorneys' Eyes Only" where warranted).

7. "All" and "Each" Qualifiers. OWS objects to each Interrogatory that employs the terms "all," "each," "every," "any and all," or similar terms of totality to the extent such terms impose unreasonable and unduly burdensome obligations that exceed the scope of reasonable discovery. OWS will respond to such Interrogatories to the extent reasonably practicable and will make reasonable efforts to identify responsive information, but does not warrant that its responses are exhaustive or that every conceivably responsive item of information has been identified.

8. Incorporation of General Objections. OWS hereby incorporates each of the foregoing General Objections into every specific response set forth below as if fully and completely stated therein. The failure to restate a particular General Objection in response to a specific Interrogatory shall not constitute a waiver of that objection.

DEFINITIONS

For purposes of these Responses and Objections, the following defined terms shall have the meanings set forth below:

"Patents-in-Suit" refers collectively to: (a) U.S. Patent No. 10,234,567 (the "'567 Patent"); (b) U.S. Patent No. 10,891,234 (the "'234 Patent"); (c) U.S. Patent No. 11,045,678 (the "'678 Patent"); and (d) U.S. Patent No. 11,312,890 (the "'890 Patent").

"Accused Products" refers to the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver, each manufactured, used, sold, offered for sale, and/or imported into the United States by Defendant Lumos Photonics, Inc., including all variants, versions, configurations, and successors thereof.

"OWS" or "Plaintiff" refers to Optiwave Semiconductor Corp., a Delaware corporation with its principal place of business at 2775 Augustine Drive, Suite 400, San Jose, California 95054.

"Lumos" or "Defendant" refers to Lumos Photonics, Inc., a Delaware corporation with its principal place of business at 9820 Towne Centre Drive, Suite 200, San Diego, California 92121.

"POSITA" means a person of ordinary skill in the art at the time of the respective Patent-in-Suit's effective filing date, as more fully described in OWS's Preliminary Claim Construction Contentions served September 12, 2022.

"Complaint" refers to Plaintiff's Complaint for Patent Infringement filed on June 3, 2022 (Dkt. No. 1), and the Amended Complaint filed on August 19, 2022 (Dkt. No. 28).

SPECIFIC INTERROGATORY RESPONSES

INTERROGATORY NO. 1

Interrogatory: Identify each claim of each Patent-in-Suit that Plaintiff contends is infringed by each Accused Product, and for each asserted claim, describe in detail the basis for Plaintiff's infringement contentions, including whether Plaintiff contends literal infringement, infringement under the doctrine of equivalents, or both.

Objections: OWS objects to this Interrogatory as a premature contention interrogatory under Rule 33(a)(2). Claim construction proceedings are pending and the Court has scheduled a Markman hearing for January 30, 2023. OWS's detailed infringement contentions are necessarily dependent upon, and will be informed by, the Court's resolution of disputed claim terms. OWS further objects to the extent this Interrogatory seeks information protected by the attorney work product doctrine, including counsel's mental impressions, legal theories, and litigation strategy. Subject to and without waiving these objections, OWS responds as follows:

Response:

OWS has asserted claims of each of the four Patents-in-Suit against one or both of the Accused Products, as set forth below. OWS contends that each Accused Product literally infringes each asserted claim identified below, and in the alternative, infringes under the doctrine of equivalents. OWS's infringement theories are based on its review of publicly available technical documentation, Lumos's marketing materials, published datasheets and product specifications, presentations at industry conferences (including OFC 2022 and ECOC 2022), and information obtained through discovery to date. OWS's detailed element-by-element infringement contentions will be served at the time designated by the Court's scheduling order.

U.S. Patent No. 10,234,567 (the "'567 Patent"): OWS asserts Claims 1, 4, 7, 12, and 15 of the '567 Patent against both the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver. OWS contends that both Accused Products literally infringe each of the foregoing claims, and in the alternative, infringe under the doctrine of equivalents. The '567 Patent is directed to an integrated optical coupler comprising a tapered silicon waveguide having a tip width of less than 200 nanometers adiabatically coupled to a silicon nitride waveguide layer. The claimed structure enables low-loss optical coupling between disparate waveguide modes, which is essential for efficient fiber-to-chip and chip-to-fiber light coupling in silicon photonic integrated circuits. OWS contends that the Accused Products incorporate integrated waveguide couplers with tapered mode converters that practice each and every element of the asserted claims of the '567 Patent. Specifically, OWS contends that the Accused Products utilize silicon waveguides with tapered tips dimensioned within the claimed range that are adiabatically coupled to silicon nitride waveguide layers, thereby satisfying the structural and functional limitations of the asserted claims. OWS's detailed infringement contentions will be set forth at the appropriate time under the Court's scheduling order and will include element-by-element claim charts. OWS expressly reserves the right to supplement this response following claim construction.

U.S. Patent No. 10,891,234 (the "'234 Patent"): OWS asserts Claims 1, 3, 5, 8, and 11 of the '234 Patent against both the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver. OWS contends that both Accused Products literally infringe each of the foregoing claims, and in the alternative, infringe under the doctrine of equivalents. The '234 Patent is directed to a germanium-on-silicon photodetector with a graded buffer layer having a continuously varying germanium concentration for enhanced responsivity at wavelengths relevant to optical communications (including the C-band and L-band windows). The claimed graded buffer layer architecture reduces threading dislocation density at the germanium-silicon interface, thereby improving device performance and reliability. OWS contends that the Accused Products employ germanium-on-silicon photodetector architectures with graded buffer layers that satisfy each and every limitation of the asserted claims. Based on publicly available information, including Lumos's technical publications describing its photodetector design, OWS contends that Lumos's germanium photodetectors incorporate a graded buffer with a continuously varying germanium concentration profile consistent with the claimed invention. OWS reserves the right to supplement this response as additional technical information is obtained through discovery.

U.S. Patent No. 11,045,678 (the "'678 Patent"): OWS asserts Claims 1, 2, 6, 9, and 14 of the '678 Patent against the LumosBridge™ 800G Optical Engine. OWS contends that the LumosBridge 800G literally infringes each of the foregoing claims, and in the alternative, infringes under the doctrine of equivalents. The '678 Patent is directed to a multi-channel optical transceiver with an integrated wavelength-division multiplexing ("WDM") element monolithically formed on a single silicon die. The claimed architecture eliminates the need for discrete external WDM components, thereby reducing optical losses, component count, and overall module size. OWS contends that the LumosBridge 800G platform incorporates a WDM component — specifically, an arrayed waveguide grating or echelle grating — that is fabricated as part of the same semiconductor fabrication process on a single silicon photonic die. Based on publicly available information, including Lumos's conference presentations and published white papers describing the LumosBridge architecture, OWS contends that the LumosBridge's monolithic integration of WDM functionality satisfies each element of the asserted claims. OWS reserves the right to supplement this response.

U.S. Patent No. 11,312,890 (the "'890 Patent"): OWS asserts Claims 1, 5, 8, and 13 of the '890 Patent against both the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver. OWS contends that both Accused Products literally infringe each of the foregoing claims, and in the alternative, infringe under the doctrine of equivalents. The '890 Patent is directed to a driver circuit architecture for high-speed silicon photonic Mach-Zehnder modulators ("MZM") featuring a pre-emphasis equalization stage electrically co-integrated with the modulator on a common substrate. The claimed co-integration of the driver equalization circuitry with the optical modulator eliminates parasitic impedances associated with off-chip electrical connections, enabling operation at higher baud rates (e.g., 100+ Gbaud). OWS contends that the Accused Products employ driver circuits with pre-emphasis equalization stages that are co-integrated with MZM modulators on a common semiconductor substrate, thereby practicing each element of the asserted claims. OWS reserves the right to supplement this response.

INTERROGATORY NO. 2

Interrogatory: Identify all prior art of which Plaintiff is aware that is material to the validity of any claim of any Patent-in-Suit, including any prior art not cited during prosecution before the United States Patent and Trademark Office.

Objections: OWS objects to this Interrogatory as overbroad and unduly burdensome. The term "all prior art" is virtually unlimited in scope, and the request imposes an unreasonable obligation to identify every conceivable prior art reference in the fields of silicon photonics, waveguide coupling, germanium photodetectors, wavelength-division multiplexing, and modulator driver circuits. OWS further objects to the extent this Interrogatory seeks disclosure of information protected by the attorney-client privilege and/or the work product doctrine, including counsel's analysis of the strengths and weaknesses of prior art references and their application to the asserted claims. OWS additionally objects that the phrase "material to the validity" is vague, ambiguous, and improperly calls for a legal conclusion, as materiality is a legal determination that requires analysis of each reference in the context of specific claim limitations and constructions. Subject to and without waiving these objections, OWS responds as follows:

Response:

OWS is aware of the prior art cited during prosecution of each Patent-in-Suit before the United States Patent and Trademark Office, as reflected in the respective file histories. The file histories of each Patent-in-Suit, including all Information Disclosure Statements submitted by the applicants, examiner search reports, and cited references, are publicly available through the USPTO's Patent Application Information Retrieval (PAIR) system and have been exchanged between the parties in discovery. OWS refers Lumos to the file histories for a complete listing of the prior art considered by the USPTO during prosecution.

In addition to the references cited during prosecution, OWS is aware of the following prior art references that have been identified by Defendant Lumos in its Answer, Affirmative Defenses, and Counterclaims (Dkt. No. 35), and/or in Defendant's Preliminary Claim Construction Contentions:

(a) U.S. Patent No. 9,456,012 (Tanaka et al.), issued September 6, 2016 — cited by Defendant against the '567 Patent under 35 U.S.C. § 102(a)(1) as alleged anticipatory prior art. OWS notes that Hideo Tanaka is a named inventor on this patent and subsequently joined OWS in 2016, where he co-invented the subject matter claimed in the '567 Patent. The '567 Patent claims were narrowed during prosecution to include the "adiabatically coupled" limitation specifically to distinguish the claimed invention from the structure disclosed in the Tanaka et al. reference. OWS contends that the '567 Patent claims, as properly construed, are not anticipated by or obvious in view of Tanaka et al.

(b) 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) — cited by Defendant against the '567 Patent under 35 U.S.C. § 103 as alleged obviousness prior art, alone or in combination with other references. OWS contends that this reference does not disclose or suggest the specific adiabatic coupling architecture claimed in the '567 Patent and does not render the asserted claims obvious.

(c) European Patent Application EP 3,234,567 A1 (published August 2, 2017; applicant: Nordlicht Photonische GmbH) — cited by Defendant against the '234 Patent under 35 U.S.C. § 102(a)(2) as alleged anticipatory prior art. OWS contends that this reference does not disclose the continuously varying germanium concentration profile required by the claims of the '234 Patent as properly construed.

(d) 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 (August 2018) — cited by Defendant against the '890 Patent under 35 U.S.C. § 103 as alleged obviousness prior art. OWS notes that this publication postdates the effective filing date of the '890 Patent (November 15, 2018) by only the publication date of the journal issue; however, the article was received by the journal on March 12, 2018 and made available online on July 3, 2018. OWS reserves the right to challenge the applicability of this reference as prior art. OWS further contends that, even if considered as prior art, this reference does not disclose or suggest the co-integrated pre-emphasis equalization stage on a common substrate as claimed.

OWS contends that none of the foregoing references, individually or in any combination, anticipate or render obvious any of the asserted claims of any Patent-in-Suit when those claims are properly construed in accordance with OWS's proposed claim constructions. The asserted claims recite specific structural and functional limitations that are not disclosed or suggested by the identified prior art, and a POSITA would not have been motivated to combine the cited references in the manner proposed by Defendant.

OWS reserves the right to supplement this response as discovery progresses and as additional prior art references are identified by Defendant, by OWS's technical expert Dr. Harold Whitfield, or through OWS's ongoing investigation.

INTERROGATORY NO. 3

Interrogatory: Identify all persons with knowledge of facts supporting Plaintiff's infringement contentions, and describe the subject matter of each such person's knowledge.

Objections: OWS objects to this Interrogatory as overbroad to the extent it calls for identification of "all persons" with any knowledge of any facts that could conceivably support OWS's infringement contentions. OWS further objects to the extent this Interrogatory seeks to compel disclosure of information protected by the attorney-client privilege and/or the work product doctrine, including the identification of persons consulted by counsel in developing litigation strategy and infringement theories. Subject to and without waiving these objections, OWS responds as follows:

Response:

OWS identifies the following persons known to OWS at this time who have knowledge of facts supporting OWS's infringement contentions, together with a description of the general subject matter of each person's knowledge:

1. Dr. Kevin Fong, Chief Technology Officer and Co-Founder, Optiwave Semiconductor Corp., 2775 Augustine Drive, Suite 400, San Jose, CA 95054. Dr. Fong has knowledge of the inventions claimed in the '567 Patent, the '234 Patent, and the '890 Patent, including the conception, development, and reduction to practice of those inventions. He has knowledge of the state of the art in silicon photonics waveguide coupling, germanium-on-silicon photodetector architectures, and Mach-Zehnder modulator driver circuits at the time of the respective inventions. Dr. Fong also has knowledge of the meaning and scope of the patent claim terms from the perspective of a person of ordinary skill in the art. Dr. Fong is knowledgeable regarding the design, architecture, and fabrication of OWS's products, which are manufactured at Pinnacle Semiconductor Foundry Co., Ltd. on a 45nm silicon-on-insulator (SOI) process. In addition, Dr. Fong possesses knowledge of publicly available technical information regarding Lumos's Accused Products, including their architecture and the silicon photonic components incorporated therein, based on his review of Lumos's published datasheets, conference presentations, and technical papers.

2. Dr. Priya Ramanathan, Chief Executive Officer and Co-Founder, Optiwave Semiconductor Corp., 2775 Augustine Drive, Suite 400, San Jose, CA 95054. Dr. Ramanathan has knowledge of the inventions claimed in the '567 Patent and the '678 Patent, including her role as a co-inventor of those patents. She has knowledge of OWS's business, products — including the OWS-400ZR and OWS-800LR coherent optical transceiver chipsets and OWS's integrated silicon photonics engines for co-packaged optics — and the competitive landscape in the data center interconnect ("DCI") and telecommunications transceiver markets. Dr. Ramanathan also has knowledge of the commercial significance of Lumos's Accused Products, the competitive dynamics between OWS and Lumos in the silicon photonics market, and the impact of Lumos's alleged infringement on OWS's business and market position. Dr. Ramanathan holds a Ph.D. in Electrical Engineering (photonics) from Stanford University.

3. Theodore "Ted" Marchetti, Vice President of intellectual Property, Optiwave Semiconductor Corp., 2775 Augustine Drive, Suite 400, San Jose, CA 95054. Mr. Marchetti (USPTO Registration No. 58,304) has knowledge of OWS's patent portfolio, which comprises eighty-seven (87) issued U.S. utility patents and fourteen (14) pending U.S. patent applications. He has knowledge of the prosecution history of each Patent-in-Suit, including all amendments, arguments, and representations made to the USPTO during prosecution. Mr. Marchetti also has knowledge of the prior art landscape in the relevant technology areas and OWS's intellectual property enforcement strategy. Mr. Marchetti supervised the prosecution of the Patents-in-Suit and was responsible for OWS's IP diligence and portfolio development.

4. Dr. Amara Osei, Principal Engineer, Optiwave Semiconductor Corp., 2775 Augustine Drive, Suite 400, San Jose, CA 95054. Dr. Osei has knowledge of the inventions claimed in the '234 Patent and the '678 Patent, including her contributions as a named inventor on both patents. She has specific knowledge regarding germanium-on-silicon photodetector architectures, including the distinctions between continuously graded and step-graded buffer layer designs, and the advantages of the continuously varying germanium concentration profile claimed in the '234 Patent. Dr. Osei also has knowledge of integrated WDM designs, including the monolithic integration approach claimed in the '678 Patent.

5. Hideo Tanaka, Former Engineer, Optiwave Semiconductor Corp. (employed 2016–2019). Mr. Tanaka has knowledge of the invention claimed in the '567 Patent, including his contributions as a named inventor. He has knowledge of the state of the art in silicon photonic waveguide coupling as reflected in his prior patent, U.S. Patent No. 9,456,012 (issued September 6, 2016), which was invented prior to his employment at OWS and which is cited by Defendant as prior art against the '567 Patent. Mr. Tanaka has knowledge of the development of the adiabatic coupling approach that forms the basis of the '567 Patent and how that approach differs from the segmented taper approach disclosed in his prior patent. Mr. Tanaka's current employer information will be supplemented upon verification.

6. Liwei Zhang, Design Engineer, Optiwave Semiconductor Corp., 2775 Augustine Drive, Suite 400, San Jose, CA 95054. Mr. Zhang has knowledge of the invention claimed in the '678 Patent, including the multi-channel optical transceiver architecture with a monolithically formed wavelength-division multiplexing element on a single silicon die.

7. Rajesh Iyer, Circuit Designer, Optiwave Semiconductor Corp., 2775 Augustine Drive, Suite 400, San Jose, CA 95054. Mr. Iyer has knowledge of the invention claimed in the '890 Patent, including the driver circuit architecture for high-speed silicon photonic Mach-Zehnder modulators featuring a pre-emphasis equalization stage co-integrated with the modulator on a common substrate. Mr. Iyer designed the equalization circuitry and co-integration approach that is the subject of the '890 Patent claims.

8. Sandra Ellison, General Counsel, Optiwave Semiconductor Corp., 2775 Augustine Drive, Suite 400, San Jose, CA 95054. Ms. Ellison has knowledge of OWS's cease-and-desist correspondence with Lumos, including OWS's March 15, 2022 letter to Lumos identifying the '567 and '234 Patents and accusing the LumosBridge and LumosEdge products of infringement. Ms. Ellison also has knowledge of Lumos's April 4, 2022 response denying infringement through its General Counsel, Richard Talbot. Ms. Ellison has knowledge of OWS's decision to initiate this litigation and the authorization thereof by OWS's Board of Directors.

9. Dr. Harold Whitfield, Whitfield Technical Consulting Group, Inc., 530 Lytton Avenue, Suite 210, Palo Alto, CA 94301. Dr. Whitfield is a technical expert retained by OWS. He has knowledge of the technology underlying the Patents-in-Suit, the meaning of disputed claim terms from the perspective of a person of ordinary skill in the art, and the analysis of whether the Accused Products infringe the asserted claims. Dr. Whitfield is Professor Emeritus at the University of California, Santa Barbara, with over two hundred (200) publications in the field of integrated photonics. He holds a Ph.D. in Electrical Engineering (photonics) from the University of California, Berkeley.

10. Dr. Lawrence Kessler, Apex Claim Analytics LLC, 150 North Michigan Avenue, Suite 2400, Chicago, IL 60601. Dr. Kessler is a damages expert retained by OWS. He has knowledge of the reasonable royalty analysis framework, the application of the Georgia-Pacific factors to the circumstances of this case, and the calculation of damages attributable to Lumos's alleged infringement. Dr. Kessler holds a Ph.D. in Economics from Northwestern University.

OWS reserves the right to supplement this identification as discovery continues, as additional witnesses are identified, and as OWS's experts finalize their analyses. OWS has not yet completed its review of documents produced by Lumos in discovery and may identify additional persons with relevant knowledge as that review progresses.

INTERROGATORY NO. 4

Interrogatory: Describe in detail the factual basis for Plaintiff's claimed damages, including the methodology, royalty rate, royalty base, and any other measure of damages Plaintiff intends to prove at trial.

Objections: OWS objects to this Interrogatory as premature. Expert discovery has not yet commenced, and OWS's retained damages expert, Dr. Lawrence Kessler, has not completed his analysis of the damages attributable to Defendant's infringement. OWS further objects to the extent this Interrogatory seeks expert opinions, analyses, and conclusions that will be disclosed at the time designated by the Court's scheduling order for service of expert reports, pursuant to Rule 26(a)(2) of the Federal Rules of Civil Procedure. OWS's damages theories are being developed and refined based on discovery that is ongoing, and a complete response is not possible at this stage of the litigation. Subject to and without waiving these objections, OWS responds as follows:

Response:

OWS seeks damages pursuant to 35 U.S.C. § 284, which provides that "[u]pon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer." OWS seeks compensatory damages for Defendant's infringement of the Patents-in-Suit in an amount that shall not be less than a reasonable royalty for Defendant's unauthorized use of OWS's patented technology.

OWS's preliminary damages theory is based on a reasonable royalty analysis utilizing the well-established Georgia-Pacific factor framework. See Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970). OWS has retained Dr. Lawrence Kessler of Apex Claim Analytics LLC to develop this analysis. Dr. Kessler is a recognized expert in intellectual property damages, with more than two decades of experience in patent damages analysis and extensive trial testimony experience. He holds a Ph.D. in Economics from Northwestern University. Dr. Kessler's full analysis and opinions will be set forth in his expert report, to be served at the time designated by the Court's scheduling order.

Based on the information presently available to OWS, OWS's preliminary damages framework is as follows:

Royalty Base. OWS contends that the appropriate royalty base consists of the combined revenue from the Accused Products — the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver — for the period of infringement. Based on information disclosed in Lumos's Annual Report on Form 10-K filed with the Securities and Exchange Commission, and as confirmed through Lumos's responses to OWS's discovery requests, the combined revenue from the Accused Products for calendar year 2022 is approximately $148.6 million. The pre-suit damages period, encompassing the first and second quarters of calendar year 2022 (prior to the filing of OWS's Complaint on June 3, 2022), accounts for approximately $62.3 million in Accused Product revenue. The LumosBridge 800G has a per-unit price in the range of $1,200 to $1,800, depending on configuration and volume, and the LumosEdge 400ZR+ has a per-unit price in the range of $600 to $900, depending on configuration and volume.

Royalty Rate. OWS's preliminary estimated reasonable royalty rate is 7.5%, to be applied to the Accused Product revenue for the period of infringement. This preliminary rate reflects OWS's assessment of the value contributed by the patented technology to the Accused Products, the competitive alternatives available to Lumos, the commercial relationship and competitive dynamics between OWS and Lumos, and other factors relevant to the Georgia-Pacific analysis. Application of the preliminary 7.5% rate to the 2022 Accused Product revenue of $148.6 million yields a base annual royalty of approximately $11.145 million. OWS reserves the right to adjust this rate based on Dr. Kessler's analysis of the full Georgia-Pacific factor framework, including analysis of comparable license agreements, the profitability of the Accused Products, and the importance of the patented features to Lumos's product sales.

Total Claimed Damages. OWS's total claimed damages exceed $75 million, accounting for: (a) pre-suit damages for the period from the earliest date of infringement (no later than Q3 2021 for the LumosEdge, and no later than Q1 2022 for the LumosBridge) through the date of filing of the Complaint (June 3, 2022); (b) ongoing post-suit damages from the date of filing through the date of trial or judgment; (c) pre-judgment interest on the damages award; and (d) enhancement of damages for willful infringement under 35 U.S.C. § 284 (up to treble damages), as further described in OWS's response to Interrogatory No. 7 below. OWS contends that Defendant's infringement is willful because, among other reasons, Lumos continued to manufacture, sell, and offer for sale the Accused Products after receiving OWS's cease-and-desist letter on March 15, 2022, and after Lumos's April 4, 2022 response through its General Counsel, Richard Talbot, denying infringement without a reasonable basis.

Patent Portfolio Valuation. OWS's pre-litigation patent portfolio valuation, conducted by Clearpath IP Valuation Services, Inc. (lead analyst: Jennifer Armitage, CFA, CLP), valued OWS's full patent portfolio at approximately $215 million and the four asserted Patents-in-Suit collectively at approximately $42.8 million. This valuation was conducted for OWS's internal business planning purposes and informs the significance of the patented technology in the relevant market. The valuation methodology employed by Ms. Armitage considered, among other factors, the strength of the patent claims, the breadth of coverage, the relevance of the patents to commercially significant products and markets, and comparable market transactions.

Lumos Financial Context. At the time of the filing of OWS's Complaint on June 3, 2022, Lumos Photonics, Inc. had a market capitalization of approximately $1.87 billion. Lumos is publicly traded on the Nasdaq Stock Market under the ticker symbol "LMPH." Lumos's fiscal year 2022 total revenue was approximately $312.8 million, of which the Accused Products represent approximately $148.6 million, or approximately 47.5% of Lumos's total revenue. The Accused Products thus represent a highly significant component of Lumos's overall business. OWS understands that Lumos's largest institutional shareholder is Ridgeline Asset Management, LLC, which holds approximately 9.2% of Lumos's outstanding common shares.

OWS reserves the right to supplement and amend this response upon completion of expert discovery, Dr. Kessler's analysis of the full Georgia-Pacific factor framework (including comparable licenses, the parties' profits, the value of the patented technology relative to the prior art, and other relevant factors), and the receipt of additional financial discovery from Lumos.

INTERROGATORY NO. 5

Interrogatory: Identify all license agreements, including the parties, licensed patents, royalty rates or other financial terms, and effective dates, that Plaintiff contends are comparable to a hypothetical license for the Patents-in-Suit and that Plaintiff may rely upon to support its damages theories.

Objections: OWS objects to this Interrogatory as premature. OWS's retained damages expert, Dr. Lawrence Kessler, has not yet completed his analysis of comparable license agreements, and the identification of such agreements is necessarily dependent upon the completion of ongoing discovery, including the production and review of license agreements by both parties and third parties. OWS further objects to the extent that a full response would require disclosure of the terms of confidential license agreements that are subject to third-party confidentiality obligations and that have not been produced in this litigation. Subject to and without waiving these objections, OWS responds as follows:

Response:

OWS's identification and analysis of comparable license agreements is ongoing and will be set forth in the expert report of Dr. Lawrence Kessler, to be served at the time designated by the Court's scheduling order. Dr. Kessler is currently reviewing OWS's own licensing history, license agreements to which Lumos is a party (to the extent produced in discovery), and publicly available license agreements and licensing data in the silicon photonics, semiconductor, and optical communications industries. OWS is also evaluating publicly available information regarding licensing rates in related technology fields, including rates established in prior patent litigation.

OWS reserves the right to supplement this response at the appropriate time, including in connection with the service of Dr. Kessler's expert report.

INTERROGATORY NO. 6

Interrogatory: For each Accused Product, identify the earliest date on which Plaintiff contends that Defendant's infringement began.

Objections: Subject to and incorporating the General Objections set forth above, OWS responds as follows:

Response:

OWS contends that the earliest dates of infringement for each Accused Product are as follows:

LumosEdge™ 400ZR+ Pluggable Transceiver: OWS contends that infringement of the '567 Patent (U.S. Patent No. 10,234,567, issued March 19, 2019), the '234 Patent (U.S. Patent No. 10,891,234, issued January 14, 2021), and the '890 Patent (U.S. Patent No. 11,312,890) began no later than the third quarter of 2021, when the LumosEdge 400ZR+ entered production and was first shipped to customers, based on publicly available information regarding Lumos's product launch timeline. With respect to the '678 Patent (U.S. Patent No. 11,045,678, issued June 29, 2021), OWS contends that infringement began no later than the third quarter of 2021, to the extent the LumosEdge practices the claims of that patent. The '890 Patent was issued on April 26, 2022 (having an effective filing date of November 15, 2018). OWS contends that infringement of the '890 Patent by the LumosEdge began upon the issuance date of the '890 Patent (April 26, 2022) with respect to any pre-issuance sales or offers for sale that continued post-issuance, and OWS seeks damages for post-issuance infringement. OWS further reserves the right to assert pre-issuance damages under 35 U.S.C. § 154(d) if the applicable requirements are met, including that the published application and the issued patent contain substantially identical claims.

LumosBridge™ 800G Optical Engine: OWS contends that infringement of all four Patents-in-Suit began no later than the first quarter of 2022, when the LumosBridge 800G was first shipped to customers, based on publicly available information including Lumos's press releases and SEC filings. Infringement of the '890 Patent (issued April 26, 2022) began no later than the issuance date of the '890 Patent.

OWS further contends that its March 15, 2022 cease-and-desist letter to Lumos, specifically identifying the '567 Patent and the '234 Patent and accusing both the LumosBridge and LumosEdge products of infringement, placed Lumos on actual notice of OWS's patent rights. Lumos's continued manufacture, sale, and offer for sale of the Accused Products after receipt of that letter supports a finding of willful infringement warranting enhanced damages for the post-notice period.

OWS reserves the right to supplement this response as additional facts regarding the timing of Defendant's infringing activities are obtained through discovery.

INTERROGATORY NO. 7

Interrogatory: Describe in detail all facts supporting Plaintiff's contention that Defendant's infringement was willful.

Objections: OWS objects to this Interrogatory as a premature contention interrogatory under Rule 33(a)(2). Discovery is ongoing, and the factual basis for OWS's willfulness contentions will be further developed through discovery, including the depositions of Lumos's officers and employees and the review of Lumos's internal documents. Subject to and without waiving these objections, OWS responds as follows:

Response:

OWS contends that Lumos's infringement of the Patents-in-Suit has been willful and deliberate, warranting enhanced damages under 35 U.S.C. § 284 and, potentially, an award of attorneys' fees under 35 U.S.C. § 285. The facts known to OWS at this time supporting this contention are as follows:

(a) On March 15, 2022, OWS, through its General Counsel Sandra Ellison, sent a cease-and-desist letter to Lumos Photonics, Inc. (directed to the attention of Richard Talbot, Lumos's General Counsel). The letter specifically identified U.S. Patent Nos. 10,234,567 (the '567 Patent) and 10,891,234 (the '234 Patent), described the patented technology, and identified Lumos's LumosBridge 800G Optical Engine and LumosEdge 400ZR+ Pluggable Transceiver as products that OWS believed infringed the identified patents. The letter requested that Lumos cease and desist from further manufacture, sale, offer for sale, importation, and use of the infringing products and requested a meeting to discuss resolution.

(b) On April 4, 2022, Lumos, through its General Counsel Richard Talbot, responded to OWS's cease-and-desist letter. Lumos denied infringement and asserted that OWS's patents are invalid. Lumos did not, however, identify any specific non-infringement or invalidity basis, did not represent that it had obtained or would obtain a competent opinion of counsel regarding the identified patents, and did not agree to cease or modify the allegedly infringing activity.

(c) Following Lumos's denial, Lumos continued to manufacture, sell, and offer for sale the Accused Products without modification or cessation, and without taking any reasonable steps to avoid infringement or to design around OWS's patented technology.

(d) OWS filed its Complaint for Patent Infringement on June 3, 2022, providing Lumos with additional formal notice of OWS's patent infringement claims. Lumos has continued to sell and offer for sale the Accused Products throughout the pendency of this litigation, including following the filing of the Complaint and the service of OWS's Amended Complaint on August 19, 2022.

(e) OWS contends that Lumos's continued manufacture, sale, and offer for sale of the Accused Products after receiving actual notice of OWS's patents and specific infringement allegations, and without a good-faith basis for its position that it does not infringe, constitutes egregious conduct warranting enhanced damages under the standard articulated in Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016).

OWS reserves the right to supplement this response based on evidence obtained in discovery, including but not limited to: (i) evidence of Lumos's internal analysis, evaluation, or consideration of OWS's patents prior to or after receiving OWS's cease-and-desist letter; (ii) any opinions of counsel that Lumos obtained or failed to obtain regarding the Patents-in-Suit; (iii) Lumos's knowledge of OWS's patent portfolio prior to March 15, 2022, including through competitive intelligence activities, industry publications, or prior business dealings; (iv) evidence that Lumos deliberately copied or was otherwise aware of OWS's patented technology during the design and development of the Accused Products; and (v) any other evidence relevant to the willfulness inquiry.

INTERROGATORY NO. 8

Interrogatory: Describe any amendments, arguments, or representations made during prosecution of each Patent-in-Suit before the United States Patent and Trademark Office that Plaintiff contends are relevant to the proper construction of the asserted claims.

Objections: OWS objects to this Interrogatory as overbroad to the extent it calls for a comprehensive recitation of the entire prosecution history of four separate patents. The complete prosecution histories of each Patent-in-Suit are publicly available through the USPTO's PAIR system, have been exchanged between the parties, and speak for themselves. OWS further objects to the extent this Interrogatory improperly seeks legal conclusions regarding the legal significance of prosecution history events, which are properly addressed through the claim construction process. Subject to and without waiving these objections, OWS responds as follows:

Response:

OWS identifies the following prosecution history events that OWS contends are relevant to the proper construction of the asserted claims. This summary is not intended to be exhaustive, and OWS's full prosecution history analysis is set forth in its claim construction briefing and the Declaration of Dr. Harold Whitfield submitted in support thereof.

U.S. Patent No. 10,234,567 (the '567 Patent): The application that matured into the '567 Patent underwent two office action rejections during prosecution. In the first office action, the examiner rejected the original claims based on U.S. Patent No. 9,456,012 (Tanaka et al.) under 35 U.S.C. § 102(a)(1). In response, the applicants amended the independent claim to add the "adiabatically coupled" limitation, which required that the tapered silicon waveguide be "adiabatically coupled" to the silicon nitride waveguide layer. In the applicants' remarks accompanying the amendment, the applicants distinguished Tanaka et al. by explaining that the Tanaka reference disclosed a segmented taper approach that was not adiabatic in nature, whereas the claimed invention required a continuous, gradual mode transition characteristic of adiabatic coupling. The examiner allowed the amended claims in the second office action. OWS contends that this amendment narrowed the claims to require adiabatic coupling — i.e., a mode transition that occurs sufficiently gradually that no significant optical power is lost to radiation modes — but did not limit the term "adiabatically coupled" to the unreasonably narrow construction proposed by Defendant, which would import specific dimensional requirements not recited in the claims.

U.S. Patent No. 10,891,234 (the '234 Patent): The application that matured into the '234 Patent was allowed on the first office action following an examiner interview conducted on August 14, 2020. The specification of the '234 Patent describes multiple embodiments, including both a "continuously graded" buffer layer and a "step-graded" buffer layer, though the asserted claims use the phrase "continuously varying" to describe the germanium concentration profile. During the examiner interview, the applicants discussed the distinctions between continuously graded and step-graded approaches, and the examiner indicated that the "continuously varying" language of the claims was sufficient to distinguish the prior art of record. OWS contends that the prosecution history does not support the unduly narrow construction proposed by Defendant, which would require a specific mathematical function (e.g., linear ramp) for the concentration profile.

U.S. Patent No. 11,045,678 (the '678 Patent): The application that matured into the '678 Patent underwent three office actions during prosecution. In the second office action, the examiner rejected the claims based on references disclosing hybrid integration approaches (i.e., separately fabricated optical components assembled onto a common substrate). In response, the applicants amended the independent claim to add the "monolithically formed" limitation, specifying that the WDM element is "monolithically formed on a single silicon die." The applicants' remarks accompanying this amendment stated that "the present invention is distinguished from heterogeneous integration approaches in which separately fabricated optical components are bonded or assembled onto a platform." OWS contends that this amendment distinguishes heterogeneous integration — in which WDM elements are separately fabricated and then integrated — but does not impose the specific fabrication process-level restrictions proposed by Defendant, which would require a particular CMOS-compatible fabrication flow not recited in the claims.

U.S. Patent No. 11,312,890 (the '890 Patent): The application that matured into the '890 Patent underwent two office actions during prosecution. In the first office action, the examiner rejected the original claims based on references disclosing driver circuits that were separately fabricated and subsequently bonded to a modulator substrate. In response, the applicants amended the independent claim to include the "co-integrated" limitation, requiring that the pre-emphasis equalization stage be "electrically co-integrated with the modulator on a common substrate." In the applicants' accompanying remarks, the applicants explained that the term "co-integrated" requires that the driver circuit and the modulator be fabricated together on a common semiconductor substrate, as distinguished from approaches in which a driver chip is fabricated separately and then flip-chip bonded or wire-bonded to a modulator chip. OWS contends that this amendment requires co-integration on a common substrate — i.e., that both the driver equalization circuitry and the optical modulator are formed on the same substrate as part of a shared fabrication process — but does not import the additional process-level restrictions proposed by Defendant, such as requirements for specific metallization layers or specific CMOS node dimensions.

OWS's complete prosecution history analysis, including a detailed discussion of the relevance of each identified prosecution event to the disputed claim terms, is set forth in OWS's Opening Claim Construction Brief (Dkt. No. 58), OWS's Responsive Claim Construction Brief (Dkt. No. 72), and the Declaration of Dr. Harold Whitfield in Support of OWS's Claim Construction Positions (Dkt. No. 59).

INTERROGATORY NO. 9

Interrogatory: Identify each product made, used, sold, or offered for sale by Plaintiff that Plaintiff contends practices any claim of any Patent-in-Suit.

Objections: OWS objects to this Interrogatory to the extent it is not reasonably calculated to lead to the discovery of admissible evidence relevant to any claim or defense in this action. Whether OWS practices its own patents is not an element of any patent infringement claim and is not relevant to the validity or enforceability of the Patents-in-Suit. OWS further objects to the extent this Interrogatory seeks confidential product design information, including information regarding OWS's product architectures, fabrication processes, and design specifications, that is competitively sensitive and that may exceed the scope of relevant discovery. Subject to and without waiving these objections, OWS responds as follows:

Response:

OWS's products that practice one or more claims of the Patents-in-Suit include the following:

(a) The OWS-400ZR coherent optical transceiver chipset, designed for 400G ZR and ZR+ applications in data center interconnect and metro networking;

(b) The OWS-800LR coherent optical transceiver chipset, designed for 800G long-reach applications; and

(c) OWS's integrated silicon photonics engines for co-packaged optics ("CPO"), designed for next-generation hyperscale data center switch architectures.

These products are designed by OWS at its headquarters in San Jose, California, and are fabricated by Pinnacle Semiconductor Foundry Co., Ltd. ("Pinnacle") using Pinnacle's 45nm silicon-on-insulator (SOI) process. The OWS products incorporate the following technologies that practice respective claims of the Patents-in-Suit: (i) integrated waveguide couplers with tapered mode converters implementing the adiabatic coupling approach of the '567 Patent; (ii) germanium-on-silicon photodetectors with continuously graded buffer layers as claimed in the '234 Patent; (iii) integrated wavelength-division multiplexing elements monolithically formed on the silicon photonic die as claimed in the '678 Patent; and (iv) driver circuits for Mach-Zehnder modulators with co-integrated pre-emphasis equalization stages as claimed in the '890 Patent.

Further details regarding OWS's product designs and their correspondence to specific patent claims are subject to the Stipulated Protective Order entered by the Court on September 19, 2022 (Dkt. No. 42) and will be produced with appropriate confidentiality designations in accordance with the terms of the Order.

INTERROGATORY NO. 10

Interrogatory: State Plaintiff's total revenue, net income, and revenue attributable to products practicing the Patents-in-Suit for fiscal years 2020, 2021, and 2022.

Objections: OWS objects to this Interrogatory as overbroad and as seeking confidential financial information that is not proportional to the needs of this case. OWS is a privately held company, with approximately sixty-two percent (62%) of its outstanding equity held by Vantage Point Capital Partners Fund IV, LP. Unlike Lumos, OWS is not a publicly traded company and does not disclose its financial results in public filings. OWS's detailed revenue, net income, and product-specific financial data are competitively sensitive, proprietary business information. OWS further objects to the extent the information sought — specifically, OWS's own financial performance — is not relevant to the determination of damages for Defendant's infringement. The measure of damages in this case is a reasonable royalty based on the value of Defendant's use of OWS's patented technology, not OWS's own revenues or profitability. Subject to and without waiving these objections, OWS responds as follows:

Response:

OWS provides the following limited financial information on a non-confidential basis:

OWS's total revenue for fiscal year 2022 was approximately $187.4 million.

Revenue and net income figures for fiscal years 2020 and 2021, as well as revenue specifically attributable to individual products practicing the Patents-in-Suit, are confidential and will be produced subject to the terms of the Stipulated Protective Order entered by the Court on September 19, 2022 (Dkt. No. 42), with appropriate "Highly Confidential — Attorneys' Eyes Only" designations. OWS is in the process of gathering and compiling the responsive financial data and will produce such data in document form or in supplemental responses to this Interrogatory at the earliest practicable date.

INTERROGATORY NO. 11

Interrogatory: Identify each named inventor on each Patent-in-Suit, state their current employer and position, and describe their role in the development of the claimed inventions.

Objections: Subject to and incorporating the General Objections set forth above, OWS responds as follows:

Response:

The named inventors on each Patent-in-Suit, together with their current employer and position (to the extent known) and a description of their role in the development of the claimed inventions, are as follows:

U.S. Patent No. 10,234,567 (the '567 Patent):

(a) Dr. Kevin Fong — Chief Technology Officer and Co-Founder, currently employed by Optiwave Semiconductor Corp. Dr. Fong co-developed the integrated optical coupler with tapered silicon waveguide adiabatically coupled to a silicon nitride waveguide layer that is the subject of the '567 Patent. Dr. Fong conceived the overall architecture of the adiabatic mode converter and contributed to the design, simulation, and experimental validation of the claimed structure. Dr. Fong holds a Ph.D. in Electrical Engineering (photonics) and was formerly a principal engineer at a major semiconductor foundry prior to co-founding OWS.

(b) Dr. Priya Ramanathan — Chief Executive Officer and Co-Founder, currently employed by Optiwave Semiconductor Corp. Dr. Ramanathan co-developed the waveguide coupling approach that forms the basis of the '567 Patent, contributing to the optimization of the taper geometry and the selection of the silicon nitride waveguide layer parameters. Dr. Ramanathan holds a Ph.D. in Electrical Engineering (photonics) from Stanford University.

(c) Hideo Tanaka — Former Engineer, Optiwave Semiconductor Corp. (employed 2016–2019). Mr. Tanaka contributed to the development of the tapered mode converter design, bringing his prior expertise in segmented taper coupler structures to the team. Mr. Tanaka is also the named inventor of U.S. Patent No. 9,456,012 (issued September 6, 2016), which was invented prior to his employment at OWS and which discloses a segmented (non-adiabatic) taper approach. At OWS, Mr. Tanaka contributed to the evolution from segmented taper designs to the continuous adiabatic coupling approach claimed in the '567 Patent. OWS is in the process of verifying Mr. Tanaka's current employer information and will supplement this response accordingly.

U.S. Patent No. 10,891,234 (the '234 Patent):

(a) Dr. Kevin Fong — (see above). Dr. Fong contributed to the conception and development of the germanium-on-silicon photodetector architecture with a graded buffer layer, including the selection of the germanium concentration profile and the analysis of threading dislocation density reduction.

(b) Dr. Amara Osei — Principal Engineer, currently employed by Optiwave Semiconductor Corp. Dr. Osei was the primary developer of the germanium-on-silicon photodetector with graded buffer layer architecture that is the subject of the '234 Patent. Dr. Osei designed the continuously varying germanium concentration profile, conducted the epit

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S RESPONSES AND OBJECTIONS TO DEFENDANT LUMOS PHOTONICS, INC.'S FIRST SET OF INTERROGATORIES
PRELIMINARY STATEMENT
Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff"), by and through its undersigned counsel, Calderwood & Harkness LLP, hereby serves its Responses and Objections to Defendant Lumos Photonics, Inc.'s ("Lumos" or "Defendant") First Set of Interrogatories ("Interrogatories"), pursuant to Rules 26 and 33 of the Federal Rules of Civil Procedure. Lumos served its First Set of Interrogatories, together with its First Set of Requests for Production of Documents containing ninety-eight (98) separate requests, on or about November 7, 2022. These Responses and Objections are timely served as of the date set forth below, in December 2022.
These Responses and Objections are based upon the information and documents reasonably available to OWS at this time and are made without prejudice to, and are not a waiver of, OWS's right to present any additional or newly discovered evidence or information at trial, in dispositive motion practice, or in any other proceedings in this action. OWS's investigation of the facts related to this action is ongoing. Discovery is still in its early stages; fact and expert discovery have not been completed. OWS expressly reserves the right to supplement, amend, or correct these Responses and Objections as additional facts become known or as circumstances warrant, pursuant to Rule 26(e) of the Federal Rules of Civil Procedure.
Nothing in these Responses and Objections shall be deemed an admission of the relevance, materiality, or admissibility of any information provided herein. No response herein shall be construed as an admission or concession regarding any matter of law or fact, nor shall any response be construed as a waiver of any objection, right, or privilege.
These Responses and Objections have been prepared by Calderwood & Harkness LLP, One Embarcadero Center, 34th Floor, San Francisco, CA 94111, counsel of record for OWS.
Matter Number: 1014-00003
GENERAL OBJECTIONS
OWS interposes the following General Objections to Lumos's First Set of Interrogatories. Each General Objection is incorporated by reference into each Specific Response set forth below as though fully restated therein. The assertion of a General Objection does not waive or preclude any other objection that may be applicable to a particular Interrogatory, nor does it constitute an admission that any particular Interrogatory is proper or calls for discoverable information.
1. Scope and Proportionality. OWS objects to each and every Interrogatory to the extent it seeks information that is not proportional to the needs of this case under Rule 26(b)(1) of the Federal Rules of Civil Procedure, considering the importance of the issues at stake in this action, the amount in controversy (which exceeds $75 million), the parties' relative access to relevant information, the importance of the discovery sought in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit. OWS further objects to each Interrogatory to the extent it is overbroad in temporal scope, geographic scope, or subject matter scope, or to the extent it seeks information that is neither relevant to any party's claim or defense nor proportional to the needs of the case.
2. Attorney-Client Privilege and Work Product Protection. OWS objects to each and every Interrogatory to the extent it calls for, or its answer would require disclosure of, information or communications protected by the attorney-client privilege, the work product doctrine, or any other applicable privilege or immunity from discovery, including but not limited to the joint defense privilege, the common interest doctrine, and the deliberative process privilege. Any inadvertent disclosure of privileged or protected information in these Responses shall not constitute a waiver of any privilege or protection, consistent with Federal Rule of Evidence 502 and the parties' agreements regarding inadvertent production. OWS has endeavored to identify and withhold or redact privileged material, and no response herein shall be deemed a waiver of any applicable privilege or protection.
3. Premature Contention Interrogatories. OWS objects to each Interrogatory that constitutes a contention interrogatory under Rule 33(a)(2) to the extent such Interrogatory is premature given the current stage of this litigation. The parties are presently engaged in the claim construction phase of this case, and a Markman hearing has been scheduled for January 30, 2023 before the Honorable Edward J. Torvelis. Many of the Interrogatories propounded by Lumos call upon OWS to articulate its infringement theories, claim construction positions, and damages methodologies in a manner that is necessarily informed by, and will evolve following, the Court's claim construction ruling. OWS expressly reserves the right to supplement and amend its responses to contention interrogatories as discovery progresses, after claim construction is resolved, and as OWS's expert analyses are developed and finalized.
4. Ongoing Investigation. OWS's investigation into the facts and circumstances underlying this action is ongoing. Neither fact discovery nor expert discovery has been completed, and OWS has not yet had the opportunity to review and analyze the full universe of documents and information that Lumos has produced or will produce in this litigation. OWS's Responses are based on information currently known and reasonably available. OWS expressly reserves the right to supplement, amend, or correct these Responses in accordance with its continuing obligations under Rule 26(e) of the Federal Rules of Civil Procedure, as OWS's investigation continues and as additional documents and information are obtained through the discovery process.
5. Construction of Claim Terms. OWS objects to each Interrogatory to the extent it assumes, incorporates, or relies upon definitions of patent claim terms or claim constructions that are disputed between the parties and that are the subject of pending claim construction proceedings before the Court. The parties have submitted competing proposed claim constructions for multiple terms in the asserted claims. OWS answers each Interrogatory based upon its own proposed claim constructions as set forth in OWS's Preliminary Claim Construction Contentions served on September 12, 2022, and OWS's Responsive Claim Construction Contentions served on October 3, 2022. OWS does not, by answering any Interrogatory, adopt, concede, or acquiesce to any claim construction proposed by Lumos. OWS expressly reserves the right to amend its Responses to conform with the Court's claim construction ruling once entered.
6. Confidentiality. OWS objects to each and every Interrogatory to the extent that a full and complete response would require disclosure of confidential, proprietary, or trade secret business information of OWS or third parties beyond the protections afforded by the Stipulated Protective Order entered by the Court on September 19, 2022 (Dkt. No. 42). OWS will provide confidential information in accordance with the terms of the Stipulated Protective Order and will designate such information at the appropriate confidentiality level (including "Highly Confidential — Attorneys' Eyes Only" where warranted).
7. "All" and "Each" Qualifiers. OWS objects to each Interrogatory that employs the terms "all," "each," "every," "any and all," or similar terms of totality to the extent such terms impose unreasonable and unduly burdensome obligations that exceed the scope of reasonable discovery. OWS will respond to such Interrogatories to the extent reasonably practicable and will make reasonable efforts to identify responsive information, but does not warrant that its responses are exhaustive or that every conceivably responsive item of information has been identified.
8. Incorporation of General Objections. OWS hereby incorporates each of the foregoing General Objections into every specific response set forth below as if fully and completely stated therein. The failure to restate a particular General Objection in response to a specific Interrogatory shall not constitute a waiver of that objection.
DEFINITIONS
For purposes of these Responses and Objections, the following defined terms shall have the meanings set forth below:
"Patents-in-Suit" refers collectively to: (a) U.S. Patent No. 10,234,567 (the "'567 Patent"); (b) U.S. Patent No. 10,891,234 (the "'234 Patent"); (c) U.S. Patent No. 11,045,678 (the "'678 Patent"); and (d) U.S. Patent No. 11,312,890 (the "'890 Patent").
"Accused Products" refers to the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver, each manufactured, used, sold, offered for sale, and/or imported into the United States by Defendant Lumos Photonics, Inc., including all variants, versions, configurations, and successors thereof.
"OWS" or "Plaintiff" refers to Optiwave Semiconductor Corp., a Delaware corporation with its principal place of business at 2775 Augustine Drive, Suite 400, San Jose, California 95054.
"Lumos" or "Defendant" refers to Lumos Photonics, Inc., a Delaware corporation with its principal place of business at 9820 Towne Centre Drive, Suite 200, San Diego, California 92121.
"POSITA" means a person of ordinary skill in the art at the time of the respective Patent-in-Suit's effective filing date, as more fully described in OWS's Preliminary Claim Construction Contentions served September 12, 2022.
"Complaint" refers to Plaintiff's Complaint for Patent Infringement filed on June 3, 2022 (Dkt. No. 1), and the Amended Complaint filed on August 19, 2022 (Dkt. No. 28).
SPECIFIC INTERROGATORY RESPONSES
INTERROGATORY NO. 1
Interrogatory: Identify each claim of each Patent-in-Suit that Plaintiff contends is infringed by each Accused Product, and for each asserted claim, describe in detail the basis for Plaintiff's infringement contentions, including whether Plaintiff contends literal infringement, infringement under the doctrine of equivalents, or both.
Objections: OWS objects to this Interrogatory as a premature contention interrogatory under Rule 33(a)(2). Claim construction proceedings are pending and the Court has scheduled a Markman hearing for January 30, 2023. OWS's detailed infringement contentions are necessarily dependent upon, and will be informed by, the Court's resolution of disputed claim terms. OWS further objects to the extent this Interrogatory seeks information protected by the attorney work product doctrine, including counsel's mental impressions, legal theories, and litigation strategy. Subject to and without waiving these objections, OWS responds as follows:
Response:
OWS has asserted claims of each of the four Patents-in-Suit against one or both of the Accused Products, as set forth below. OWS contends that each Accused Product literally infringes each asserted claim identified below, and in the alternative, infringes under the doctrine of equivalents. OWS's infringement theories are based on its review of publicly available technical documentation, Lumos's marketing materials, published datasheets and product specifications, presentations at industry conferences (including OFC 2022 and ECOC 2022), and information obtained through discovery to date. OWS's detailed element-by-element infringement contentions will be served at the time designated by the Court's scheduling order.
U.S. Patent No. 10,234,567 (the "'567 Patent"): OWS asserts Claims 1, 4, 7, 12, and 15 of the '567 Patent against both the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver. OWS contends that both Accused Products literally infringe each of the foregoing claims, and in the alternative, infringe under the doctrine of equivalents. The '567 Patent is directed to an integrated optical coupler comprising a tapered silicon waveguide having a tip width of less than 200 nanometers adiabatically coupled to a silicon nitride waveguide layer. The claimed structure enables low-loss optical coupling between disparate waveguide modes, which is essential for efficient fiber-to-chip and chip-to-fiber light coupling in silicon photonic integrated circuits. OWS contends that the Accused Products incorporate integrated waveguide couplers with tapered mode converters that practice each and every element of the asserted claims of the '567 Patent. Specifically, OWS contends that the Accused Products utilize silicon waveguides with tapered tips dimensioned within the claimed range that are adiabatically coupled to silicon nitride waveguide layers, thereby satisfying the structural and functional limitations of the asserted claims. OWS's detailed infringement contentions will be set forth at the appropriate time under the Court's scheduling order and will include element-by-element claim charts. OWS expressly reserves the right to supplement this response following claim construction.
U.S. Patent No. 10,891,234 (the "'234 Patent"): OWS asserts Claims 1, 3, 5, 8, and 11 of the '234 Patent against both the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver. OWS contends that both Accused Products literally infringe each of the foregoing claims, and in the alternative, infringe under the doctrine of equivalents. The '234 Patent is directed to a germanium-on-silicon photodetector with a graded buffer layer having a continuously varying germanium concentration for enhanced responsivity at wavelengths relevant to optical communications (including the C-band and L-band windows). The claimed graded buffer layer architecture reduces threading dislocation density at the germanium-silicon interface, thereby improving device performance and reliability. OWS contends that the Accused Products employ germanium-on-silicon photodetector architectures with graded buffer layers that satisfy each and every limitation of the asserted claims. Based on publicly available information, including Lumos's technical publications describing its photodetector design, OWS contends that Lumos's germanium photodetectors incorporate a graded buffer with a continuously varying germanium concentration profile consistent with the claimed invention. OWS reserves the right to supplement this response as additional technical information is obtained through discovery.
U.S. Patent No. 11,045,678 (the "'678 Patent"): OWS asserts Claims 1, 2, 6, 9, and 14 of the '678 Patent against the LumosBridge™ 800G Optical Engine. OWS contends that the LumosBridge 800G literally infringes each of the foregoing claims, and in the alternative, infringes under the doctrine of equivalents. The '678 Patent is directed to a multi-channel optical transceiver with an integrated wavelength-division multiplexing ("WDM") element monolithically formed on a single silicon die. The claimed architecture eliminates the need for discrete external WDM components, thereby reducing optical losses, component count, and overall module size. OWS contends that the LumosBridge 800G platform incorporates a WDM component — specifically, an arrayed waveguide grating or echelle grating — that is fabricated as part of the same semiconductor fabrication process on a single silicon photonic die. Based on publicly available information, including Lumos's conference presentations and published white papers describing the LumosBridge architecture, OWS contends that the LumosBridge's monolithic integration of WDM functionality satisfies each element of the asserted claims. OWS reserves the right to supplement this response.
U.S. Patent No. 11,312,890 (the "'890 Patent"): OWS asserts Claims 1, 5, 8, and 13 of the '890 Patent against both the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver. OWS contends that both Accused Products literally infringe each of the foregoing claims, and in the alternative, infringe under the doctrine of equivalents. The '890 Patent is directed to a driver circuit architecture for high-speed silicon photonic Mach-Zehnder modulators ("MZM") featuring a pre-emphasis equalization stage electrically co-integrated with the modulator on a common substrate. The claimed co-integration of the driver equalization circuitry with the optical modulator eliminates parasitic impedances associated with off-chip electrical connections, enabling operation at higher baud rates (e.g., 100+ Gbaud). OWS contends that the Accused Products employ driver circuits with pre-emphasis equalization stages that are co-integrated with MZM modulators on a common semiconductor substrate, thereby practicing each element of the asserted claims. OWS reserves the right to supplement this response.
INTERROGATORY NO. 2
Interrogatory: Identify all prior art of which Plaintiff is aware that is material to the validity of any claim of any Patent-in-Suit, including any prior art not cited during prosecution before the United States Patent and Trademark Office.
Objections: OWS objects to this Interrogatory as overbroad and unduly burdensome. The term "all prior art" is virtually unlimited in scope, and the request imposes an unreasonable obligation to identify every conceivable prior art reference in the fields of silicon photonics, waveguide coupling, germanium photodetectors, wavelength-division multiplexing, and modulator driver circuits. OWS further objects to the extent this Interrogatory seeks disclosure of information protected by the attorney-client privilege and/or the work product doctrine, including counsel's analysis of the strengths and weaknesses of prior art references and their application to the asserted claims. OWS additionally objects that the phrase "material to the validity" is vague, ambiguous, and improperly calls for a legal conclusion, as materiality is a legal determination that requires analysis of each reference in the context of specific claim limitations and constructions. Subject to and without waiving these objections, OWS responds as follows:
Response:
OWS is aware of the prior art cited during prosecution of each Patent-in-Suit before the United States Patent and Trademark Office, as reflected in the respective file histories. The file histories of each Patent-in-Suit, including all Information Disclosure Statements submitted by the applicants, examiner search reports, and cited references, are publicly available through the USPTO's Patent Application Information Retrieval (PAIR) system and have been exchanged between the parties in discovery. OWS refers Lumos to the file histories for a complete listing of the prior art considered by the USPTO during prosecution.
In addition to the references cited during prosecution, OWS is aware of the following prior art references that have been identified by Defendant Lumos in its Answer, Affirmative Defenses, and Counterclaims (Dkt. No. 35), and/or in Defendant's Preliminary Claim Construction Contentions:
(a) U.S. Patent No. 9,456,012 (Tanaka et al.), issued September 6, 2016 — cited by Defendant against the '567 Patent under 35 U.S.C. § 102(a)(1) as alleged anticipatory prior art. OWS notes that Hideo Tanaka is a named inventor on this patent and subsequently joined OWS in 2016, where he co-invented the subject matter claimed in the '567 Patent. The '567 Patent claims were narrowed during prosecution to include the "adiabatically coupled" limitation specifically to distinguish the claimed invention from the structure disclosed in the Tanaka et al. reference. OWS contends that the '567 Patent claims, as properly construed, are not anticipated by or obvious in view of Tanaka et al.
(b) 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) — cited by Defendant against the '567 Patent under 35 U.S.C. § 103 as alleged obviousness prior art, alone or in combination with other references. OWS contends that this reference does not disclose or suggest the specific adiabatic coupling architecture claimed in the '567 Patent and does not render the asserted claims obvious.
(c) European Patent Application EP 3,234,567 A1 (published August 2, 2017; applicant: Nordlicht Photonische GmbH) — cited by Defendant against the '234 Patent under 35 U.S.C. § 102(a)(2) as alleged anticipatory prior art. OWS contends that this reference does not disclose the continuously varying germanium concentration profile required by the claims of the '234 Patent as properly construed.
(d) 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 (August 2018) — cited by Defendant against the '890 Patent under 35 U.S.C. § 103 as alleged obviousness prior art. OWS notes that this publication postdates the effective filing date of the '890 Patent (November 15, 2018) by only the publication date of the journal issue; however, the article was received by the journal on March 12, 2018 and made available online on July 3, 2018. OWS reserves the right to challenge the applicability of this reference as prior art. OWS further contends that, even if considered as prior art, this reference does not disclose or suggest the co-integrated pre-emphasis equalization stage on a common substrate as claimed.
OWS contends that none of the foregoing references, individually or in any combination, anticipate or render obvious any of the asserted claims of any Patent-in-Suit when those claims are properly construed in accordance with OWS's proposed claim constructions. The asserted claims recite specific structural and functional limitations that are not disclosed or suggested by the identified prior art, and a POSITA would not have been motivated to combine the cited references in the manner proposed by Defendant.
OWS reserves the right to supplement this response as discovery progresses and as additional prior art references are identified by Defendant, by OWS's technical expert Dr. Harold Whitfield, or through OWS's ongoing investigation.
INTERROGATORY NO. 3
Interrogatory: Identify all persons with knowledge of facts supporting Plaintiff's infringement contentions, and describe the subject matter of each such person's knowledge.
Objections: OWS objects to this Interrogatory as overbroad to the extent it calls for identification of "all persons" with any knowledge of any facts that could conceivably support OWS's infringement contentions. OWS further objects to the extent this Interrogatory seeks to compel disclosure of information protected by the attorney-client privilege and/or the work product doctrine, including the identification of persons consulted by counsel in developing litigation strategy and infringement theories. Subject to and without waiving these objections, OWS responds as follows:
Response:
OWS identifies the following persons known to OWS at this time who have knowledge of facts supporting OWS's infringement contentions, together with a description of the general subject matter of each person's knowledge:
1. Dr. Kevin Fong, Chief Technology Officer and Co-Founder, Optiwave Semiconductor Corp., 2775 Augustine Drive, Suite 400, San Jose, CA 95054. Dr. Fong has knowledge of the inventions claimed in the '567 Patent, the '234 Patent, and the '890 Patent, including the conception, development, and reduction to practice of those inventions. He has knowledge of the state of the art in silicon photonics waveguide coupling, germanium-on-silicon photodetector architectures, and Mach-Zehnder modulator driver circuits at the time of the respective inventions. Dr. Fong also has knowledge of the meaning and scope of the patent claim terms from the perspective of a person of ordinary skill in the art. Dr. Fong is knowledgeable regarding the design, architecture, and fabrication of OWS's products, which are manufactured at Pinnacle Semiconductor Foundry Co., Ltd. on a 45nm silicon-on-insulator (SOI) process. In addition, Dr. Fong possesses knowledge of publicly available technical information regarding Lumos's Accused Products, including their architecture and the silicon photonic components incorporated therein, based on his review of Lumos's published datasheets, conference presentations, and technical papers.
2. Dr. Priya Ramanathan, Chief Executive Officer and Co-Founder, Optiwave Semiconductor Corp., 2775 Augustine Drive, Suite 400, San Jose, CA 95054. Dr. Ramanathan has knowledge of the inventions claimed in the '567 Patent and the '678 Patent, including her role as a co-inventor of those patents. She has knowledge of OWS's business, products — including the OWS-400ZR and OWS-800LR coherent optical transceiver chipsets and OWS's integrated silicon photonics engines for co-packaged optics — and the competitive landscape in the data center interconnect ("DCI") and telecommunications transceiver markets. Dr. Ramanathan also has knowledge of the commercial significance of Lumos's Accused Products, the competitive dynamics between OWS and Lumos in the silicon photonics market, and the impact of Lumos's alleged infringement on OWS's business and market position. Dr. Ramanathan holds a Ph.D. in Electrical Engineering (photonics) from Stanford University.
3. Theodore "Ted" Marchetti, Vice President of intellectual Property, Optiwave Semiconductor Corp., 2775 Augustine Drive, Suite 400, San Jose, CA 95054. Mr. Marchetti (USPTO Registration No. 58,304) has knowledge of OWS's patent portfolio, which comprises eighty-seven (87) issued U.S. utility patents and fourteen (14) pending U.S. patent applications. He has knowledge of the prosecution history of each Patent-in-Suit, including all amendments, arguments, and representations made to the USPTO during prosecution. Mr. Marchetti also has knowledge of the prior art landscape in the relevant technology areas and OWS's intellectual property enforcement strategy. Mr. Marchetti supervised the prosecution of the Patents-in-Suit and was responsible for OWS's IP diligence and portfolio development.
4. Dr. Amara Osei, Principal Engineer, Optiwave Semiconductor Corp., 2775 Augustine Drive, Suite 400, San Jose, CA 95054. Dr. Osei has knowledge of the inventions claimed in the '234 Patent and the '678 Patent, including her contributions as a named inventor on both patents. She has specific knowledge regarding germanium-on-silicon photodetector architectures, including the distinctions between continuously graded and step-graded buffer layer designs, and the advantages of the continuously varying germanium concentration profile claimed in the '234 Patent. Dr. Osei also has knowledge of integrated WDM designs, including the monolithic integration approach claimed in the '678 Patent.
5. Hideo Tanaka, Former Engineer, Optiwave Semiconductor Corp. (employed 2016–2019). Mr. Tanaka has knowledge of the invention claimed in the '567 Patent, including his contributions as a named inventor. He has knowledge of the state of the art in silicon photonic waveguide coupling as reflected in his prior patent, U.S. Patent No. 9,456,012 (issued September 6, 2016), which was invented prior to his employment at OWS and which is cited by Defendant as prior art against the '567 Patent. Mr. Tanaka has knowledge of the development of the adiabatic coupling approach that forms the basis of the '567 Patent and how that approach differs from the segmented taper approach disclosed in his prior patent. Mr. Tanaka's current employer information will be supplemented upon verification.
6. Liwei Zhang, Design Engineer, Optiwave Semiconductor Corp., 2775 Augustine Drive, Suite 400, San Jose, CA 95054. Mr. Zhang has knowledge of the invention claimed in the '678 Patent, including the multi-channel optical transceiver architecture with a monolithically formed wavelength-division multiplexing element on a single silicon die.
7. Rajesh Iyer, Circuit Designer, Optiwave Semiconductor Corp., 2775 Augustine Drive, Suite 400, San Jose, CA 95054. Mr. Iyer has knowledge of the invention claimed in the '890 Patent, including the driver circuit architecture for high-speed silicon photonic Mach-Zehnder modulators featuring a pre-emphasis equalization stage co-integrated with the modulator on a common substrate. Mr. Iyer designed the equalization circuitry and co-integration approach that is the subject of the '890 Patent claims.
8. Sandra Ellison, General Counsel, Optiwave Semiconductor Corp., 2775 Augustine Drive, Suite 400, San Jose, CA 95054. Ms. Ellison has knowledge of OWS's cease-and-desist correspondence with Lumos, including OWS's March 15, 2022 letter to Lumos identifying the '567 and '234 Patents and accusing the LumosBridge and LumosEdge products of infringement. Ms. Ellison also has knowledge of Lumos's April 4, 2022 response denying infringement through its General Counsel, Richard Talbot. Ms. Ellison has knowledge of OWS's decision to initiate this litigation and the authorization thereof by OWS's Board of Directors.
9. Dr. Harold Whitfield, Whitfield Technical Consulting Group, Inc., 530 Lytton Avenue, Suite 210, Palo Alto, CA 94301. Dr. Whitfield is a technical expert retained by OWS. He has knowledge of the technology underlying the Patents-in-Suit, the meaning of disputed claim terms from the perspective of a person of ordinary skill in the art, and the analysis of whether the Accused Products infringe the asserted claims. Dr. Whitfield is Professor Emeritus at the University of California, Santa Barbara, with over two hundred (200) publications in the field of integrated photonics. He holds a Ph.D. in Electrical Engineering (photonics) from the University of California, Berkeley.
10. Dr. Lawrence Kessler, Apex Claim Analytics LLC, 150 North Michigan Avenue, Suite 2400, Chicago, IL 60601. Dr. Kessler is a damages expert retained by OWS. He has knowledge of the reasonable royalty analysis framework, the application of the Georgia-Pacific factors to the circumstances of this case, and the calculation of damages attributable to Lumos's alleged infringement. Dr. Kessler holds a Ph.D. in Economics from Northwestern University.
OWS reserves the right to supplement this identification as discovery continues, as additional witnesses are identified, and as OWS's experts finalize their analyses. OWS has not yet completed its review of documents produced by Lumos in discovery and may identify additional persons with relevant knowledge as that review progresses.
INTERROGATORY NO. 4
Interrogatory: Describe in detail the factual basis for Plaintiff's claimed damages, including the methodology, royalty rate, royalty base, and any other measure of damages Plaintiff intends to prove at trial.
Objections: OWS objects to this Interrogatory as premature. Expert discovery has not yet commenced, and OWS's retained damages expert, Dr. Lawrence Kessler, has not completed his analysis of the damages attributable to Defendant's infringement. OWS further objects to the extent this Interrogatory seeks expert opinions, analyses, and conclusions that will be disclosed at the time designated by the Court's scheduling order for service of expert reports, pursuant to Rule 26(a)(2) of the Federal Rules of Civil Procedure. OWS's damages theories are being developed and refined based on discovery that is ongoing, and a complete response is not possible at this stage of the litigation. Subject to and without waiving these objections, OWS responds as follows:
Response:
OWS seeks damages pursuant to 35 U.S.C. § 284, which provides that "[u]pon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer." OWS seeks compensatory damages for Defendant's infringement of the Patents-in-Suit in an amount that shall not be less than a reasonable royalty for Defendant's unauthorized use of OWS's patented technology.
OWS's preliminary damages theory is based on a reasonable royalty analysis utilizing the well-established Georgia-Pacific factor framework. See Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970). OWS has retained Dr. Lawrence Kessler of Apex Claim Analytics LLC to develop this analysis. Dr. Kessler is a recognized expert in intellectual property damages, with more than two decades of experience in patent damages analysis and extensive trial testimony experience. He holds a Ph.D. in Economics from Northwestern University. Dr. Kessler's full analysis and opinions will be set forth in his expert report, to be served at the time designated by the Court's scheduling order.
Based on the information presently available to OWS, OWS's preliminary damages framework is as follows:
Royalty Base. OWS contends that the appropriate royalty base consists of the combined revenue from the Accused Products — the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver — for the period of infringement. Based on information disclosed in Lumos's Annual Report on Form 10-K filed with the Securities and Exchange Commission, and as confirmed through Lumos's responses to OWS's discovery requests, the combined revenue from the Accused Products for calendar year 2022 is approximately $148.6 million. The pre-suit damages period, encompassing the first and second quarters of calendar year 2022 (prior to the filing of OWS's Complaint on June 3, 2022), accounts for approximately $62.3 million in Accused Product revenue. The LumosBridge 800G has a per-unit price in the range of $1,200 to $1,800, depending on configuration and volume, and the LumosEdge 400ZR+ has a per-unit price in the range of $600 to $900, depending on configuration and volume.
Royalty Rate. OWS's preliminary estimated reasonable royalty rate is 7.5%, to be applied to the Accused Product revenue for the period of infringement. This preliminary rate reflects OWS's assessment of the value contributed by the patented technology to the Accused Products, the competitive alternatives available to Lumos, the commercial relationship and competitive dynamics between OWS and Lumos, and other factors relevant to the Georgia-Pacific analysis. Application of the preliminary 7.5% rate to the 2022 Accused Product revenue of $148.6 million yields a base annual royalty of approximately $11.145 million. OWS reserves the right to adjust this rate based on Dr. Kessler's analysis of the full Georgia-Pacific factor framework, including analysis of comparable license agreements, the profitability of the Accused Products, and the importance of the patented features to Lumos's product sales.
Total Claimed Damages. OWS's total claimed damages exceed $75 million, accounting for: (a) pre-suit damages for the period from the earliest date of infringement (no later than Q3 2021 for the LumosEdge, and no later than Q1 2022 for the LumosBridge) through the date of filing of the Complaint (June 3, 2022); (b) ongoing post-suit damages from the date of filing through the date of trial or judgment; (c) pre-judgment interest on the damages award; and (d) enhancement of damages for willful infringement under 35 U.S.C. § 284 (up to treble damages), as further described in OWS's response to Interrogatory No. 7 below. OWS contends that Defendant's infringement is willful because, among other reasons, Lumos continued to manufacture, sell, and offer for sale the Accused Products after receiving OWS's cease-and-desist letter on March 15, 2022, and after Lumos's April 4, 2022 response through its General Counsel, Richard Talbot, denying infringement without a reasonable basis.
Patent Portfolio Valuation. OWS's pre-litigation patent portfolio valuation, conducted by Clearpath IP Valuation Services, Inc. (lead analyst: Jennifer Armitage, CFA, CLP), valued OWS's full patent portfolio at approximately $215 million and the four asserted Patents-in-Suit collectively at approximately $42.8 million. This valuation was conducted for OWS's internal business planning purposes and informs the significance of the patented technology in the relevant market. The valuation methodology employed by Ms. Armitage considered, among other factors, the strength of the patent claims, the breadth of coverage, the relevance of the patents to commercially significant products and markets, and comparable market transactions.
Lumos Financial Context. At the time of the filing of OWS's Complaint on June 3, 2022, Lumos Photonics, Inc. had a market capitalization of approximately $1.87 billion. Lumos is publicly traded on the Nasdaq Stock Market under the ticker symbol "LMPH." Lumos's fiscal year 2022 total revenue was approximately $312.8 million, of which the Accused Products represent approximately $148.6 million, or approximately 47.5% of Lumos's total revenue. The Accused Products thus represent a highly significant component of Lumos's overall business. OWS understands that Lumos's largest institutional shareholder is Ridgeline Asset Management, LLC, which holds approximately 9.2% of Lumos's outstanding common shares.
OWS reserves the right to supplement and amend this response upon completion of expert discovery, Dr. Kessler's analysis of the full Georgia-Pacific factor framework (including comparable licenses, the parties' profits, the value of the patented technology relative to the prior art, and other relevant factors), and the receipt of additional financial discovery from Lumos.
INTERROGATORY NO. 5
Interrogatory: Identify all license agreements, including the parties, licensed patents, royalty rates or other financial terms, and effective dates, that Plaintiff contends are comparable to a hypothetical license for the Patents-in-Suit and that Plaintiff may rely upon to support its damages theories.
Objections: OWS objects to this Interrogatory as premature. OWS's retained damages expert, Dr. Lawrence Kessler, has not yet completed his analysis of comparable license agreements, and the identification of such agreements is necessarily dependent upon the completion of ongoing discovery, including the production and review of license agreements by both parties and third parties. OWS further objects to the extent that a full response would require disclosure of the terms of confidential license agreements that are subject to third-party confidentiality obligations and that have not been produced in this litigation. Subject to and without waiving these objections, OWS responds as follows:
Response:
OWS's identification and analysis of comparable license agreements is ongoing and will be set forth in the expert report of Dr. Lawrence Kessler, to be served at the time designated by the Court's scheduling order. Dr. Kessler is currently reviewing OWS's own licensing history, license agreements to which Lumos is a party (to the extent produced in discovery), and publicly available license agreements and licensing data in the silicon photonics, semiconductor, and optical communications industries. OWS is also evaluating publicly available information regarding licensing rates in related technology fields, including rates established in prior patent litigation.
OWS reserves the right to supplement this response at the appropriate time, including in connection with the service of Dr. Kessler's expert report.
INTERROGATORY NO. 6
Interrogatory: For each Accused Product, identify the earliest date on which Plaintiff contends that Defendant's infringement began.
Objections: Subject to and incorporating the General Objections set forth above, OWS responds as follows:
Response:
OWS contends that the earliest dates of infringement for each Accused Product are as follows:
LumosEdge™ 400ZR+ Pluggable Transceiver: OWS contends that infringement of the '567 Patent (U.S. Patent No. 10,234,567, issued March 19, 2019), the '234 Patent (U.S. Patent No. 10,891,234, issued January 14, 2021), and the '890 Patent (U.S. Patent No. 11,312,890) began no later than the third quarter of 2021, when the LumosEdge 400ZR+ entered production and was first shipped to customers, based on publicly available information regarding Lumos's product launch timeline. With respect to the '678 Patent (U.S. Patent No. 11,045,678, issued June 29, 2021), OWS contends that infringement began no later than the third quarter of 2021, to the extent the LumosEdge practices the claims of that patent. The '890 Patent was issued on April 26, 2022 (having an effective filing date of November 15, 2018). OWS contends that infringement of the '890 Patent by the LumosEdge began upon the issuance date of the '890 Patent (April 26, 2022) with respect to any pre-issuance sales or offers for sale that continued post-issuance, and OWS seeks damages for post-issuance infringement. OWS further reserves the right to assert pre-issuance damages under 35 U.S.C. § 154(d) if the applicable requirements are met, including that the published application and the issued patent contain substantially identical claims.
LumosBridge™ 800G Optical Engine: OWS contends that infringement of all four Patents-in-Suit began no later than the first quarter of 2022, when the LumosBridge 800G was first shipped to customers, based on publicly available information including Lumos's press releases and SEC filings. Infringement of the '890 Patent (issued April 26, 2022) began no later than the issuance date of the '890 Patent.
OWS further contends that its March 15, 2022 cease-and-desist letter to Lumos, specifically identifying the '567 Patent and the '234 Patent and accusing both the LumosBridge and LumosEdge products of infringement, placed Lumos on actual notice of OWS's patent rights. Lumos's continued manufacture, sale, and offer for sale of the Accused Products after receipt of that letter supports a finding of willful infringement warranting enhanced damages for the post-notice period.
OWS reserves the right to supplement this response as additional facts regarding the timing of Defendant's infringing activities are obtained through discovery.
INTERROGATORY NO. 7
Interrogatory: Describe in detail all facts supporting Plaintiff's contention that Defendant's infringement was willful.
Objections: OWS objects to this Interrogatory as a premature contention interrogatory under Rule 33(a)(2). Discovery is ongoing, and the factual basis for OWS's willfulness contentions will be further developed through discovery, including the depositions of Lumos's officers and employees and the review of Lumos's internal documents. Subject to and without waiving these objections, OWS responds as follows:
Response:
OWS contends that Lumos's infringement of the Patents-in-Suit has been willful and deliberate, warranting enhanced damages under 35 U.S.C. § 284 and, potentially, an award of attorneys' fees under 35 U.S.C. § 285. The facts known to OWS at this time supporting this contention are as follows:
(a) On March 15, 2022, OWS, through its General Counsel Sandra Ellison, sent a cease-and-desist letter to Lumos Photonics, Inc. (directed to the attention of Richard Talbot, Lumos's General Counsel). The letter specifically identified U.S. Patent Nos. 10,234,567 (the '567 Patent) and 10,891,234 (the '234 Patent), described the patented technology, and identified Lumos's LumosBridge 800G Optical Engine and LumosEdge 400ZR+ Pluggable Transceiver as products that OWS believed infringed the identified patents. The letter requested that Lumos cease and desist from further manufacture, sale, offer for sale, importation, and use of the infringing products and requested a meeting to discuss resolution.
(b) On April 4, 2022, Lumos, through its General Counsel Richard Talbot, responded to OWS's cease-and-desist letter. Lumos denied infringement and asserted that OWS's patents are invalid. Lumos did not, however, identify any specific non-infringement or invalidity basis, did not represent that it had obtained or would obtain a competent opinion of counsel regarding the identified patents, and did not agree to cease or modify the allegedly infringing activity.
(c) Following Lumos's denial, Lumos continued to manufacture, sell, and offer for sale the Accused Products without modification or cessation, and without taking any reasonable steps to avoid infringement or to design around OWS's patented technology.
(d) OWS filed its Complaint for Patent Infringement on June 3, 2022, providing Lumos with additional formal notice of OWS's patent infringement claims. Lumos has continued to sell and offer for sale the Accused Products throughout the pendency of this litigation, including following the filing of the Complaint and the service of OWS's Amended Complaint on August 19, 2022.
(e) OWS contends that Lumos's continued manufacture, sale, and offer for sale of the Accused Products after receiving actual notice of OWS's patents and specific infringement allegations, and without a good-faith basis for its position that it does not infringe, constitutes egregious conduct warranting enhanced damages under the standard articulated in Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016).
OWS reserves the right to supplement this response based on evidence obtained in discovery, including but not limited to: (i) evidence of Lumos's internal analysis, evaluation, or consideration of OWS's patents prior to or after receiving OWS's cease-and-desist letter; (ii) any opinions of counsel that Lumos obtained or failed to obtain regarding the Patents-in-Suit; (iii) Lumos's knowledge of OWS's patent portfolio prior to March 15, 2022, including through competitive intelligence activities, industry publications, or prior business dealings; (iv) evidence that Lumos deliberately copied or was otherwise aware of OWS's patented technology during the design and development of the Accused Products; and (v) any other evidence relevant to the willfulness inquiry.
INTERROGATORY NO. 8
Interrogatory: Describe any amendments, arguments, or representations made during prosecution of each Patent-in-Suit before the United States Patent and Trademark Office that Plaintiff contends are relevant to the proper construction of the asserted claims.
Objections: OWS objects to this Interrogatory as overbroad to the extent it calls for a comprehensive recitation of the entire prosecution history of four separate patents. The complete prosecution histories of each Patent-in-Suit are publicly available through the USPTO's PAIR system, have been exchanged between the parties, and speak for themselves. OWS further objects to the extent this Interrogatory improperly seeks legal conclusions regarding the legal significance of prosecution history events, which are properly addressed through the claim construction process. Subject to and without waiving these objections, OWS responds as follows:
Response:
OWS identifies the following prosecution history events that OWS contends are relevant to the proper construction of the asserted claims. This summary is not intended to be exhaustive, and OWS's full prosecution history analysis is set forth in its claim construction briefing and the Declaration of Dr. Harold Whitfield submitted in support thereof.
U.S. Patent No. 10,234,567 (the '567 Patent): The application that matured into the '567 Patent underwent two office action rejections during prosecution. In the first office action, the examiner rejected the original claims based on U.S. Patent No. 9,456,012 (Tanaka et al.) under 35 U.S.C. § 102(a)(1). In response, the applicants amended the independent claim to add the "adiabatically coupled" limitation, which required that the tapered silicon waveguide be "adiabatically coupled" to the silicon nitride waveguide layer. In the applicants' remarks accompanying the amendment, the applicants distinguished Tanaka et al. by explaining that the Tanaka reference disclosed a segmented taper approach that was not adiabatic in nature, whereas the claimed invention required a continuous, gradual mode transition characteristic of adiabatic coupling. The examiner allowed the amended claims in the second office action. OWS contends that this amendment narrowed the claims to require adiabatic coupling — i.e., a mode transition that occurs sufficiently gradually that no significant optical power is lost to radiation modes — but did not limit the term "adiabatically coupled" to the unreasonably narrow construction proposed by Defendant, which would import specific dimensional requirements not recited in the claims.
U.S. Patent No. 10,891,234 (the '234 Patent): The application that matured into the '234 Patent was allowed on the first office action following an examiner interview conducted on August 14, 2020. The specification of the '234 Patent describes multiple embodiments, including both a "continuously graded" buffer layer and a "step-graded" buffer layer, though the asserted claims use the phrase "continuously varying" to describe the germanium concentration profile. During the examiner interview, the applicants discussed the distinctions between continuously graded and step-graded approaches, and the examiner indicated that the "continuously varying" language of the claims was sufficient to distinguish the prior art of record. OWS contends that the prosecution history does not support the unduly narrow construction proposed by Defendant, which would require a specific mathematical function (e.g., linear ramp) for the concentration profile.
U.S. Patent No. 11,045,678 (the '678 Patent): The application that matured into the '678 Patent underwent three office actions during prosecution. In the second office action, the examiner rejected the claims based on references disclosing hybrid integration approaches (i.e., separately fabricated optical components assembled onto a common substrate). In response, the applicants amended the independent claim to add the "monolithically formed" limitation, specifying that the WDM element is "monolithically formed on a single silicon die." The applicants' remarks accompanying this amendment stated that "the present invention is distinguished from heterogeneous integration approaches in which separately fabricated optical components are bonded or assembled onto a platform." OWS contends that this amendment distinguishes heterogeneous integration — in which WDM elements are separately fabricated and then integrated — but does not impose the specific fabrication process-level restrictions proposed by Defendant, which would require a particular CMOS-compatible fabrication flow not recited in the claims.
U.S. Patent No. 11,312,890 (the '890 Patent): The application that matured into the '890 Patent underwent two office actions during prosecution. In the first office action, the examiner rejected the original claims based on references disclosing driver circuits that were separately fabricated and subsequently bonded to a modulator substrate. In response, the applicants amended the independent claim to include the "co-integrated" limitation, requiring that the pre-emphasis equalization stage be "electrically co-integrated with the modulator on a common substrate." In the applicants' accompanying remarks, the applicants explained that the term "co-integrated" requires that the driver circuit and the modulator be fabricated together on a common semiconductor substrate, as distinguished from approaches in which a driver chip is fabricated separately and then flip-chip bonded or wire-bonded to a modulator chip. OWS contends that this amendment requires co-integration on a common substrate — i.e., that both the driver equalization circuitry and the optical modulator are formed on the same substrate as part of a shared fabrication process — but does not import the additional process-level restrictions proposed by Defendant, such as requirements for specific metallization layers or specific CMOS node dimensions.
OWS's complete prosecution history analysis, including a detailed discussion of the relevance of each identified prosecution event to the disputed claim terms, is set forth in OWS's Opening Claim Construction Brief (Dkt. No. 58), OWS's Responsive Claim Construction Brief (Dkt. No. 72), and the Declaration of Dr. Harold Whitfield in Support of OWS's Claim Construction Positions (Dkt. No. 59).
INTERROGATORY NO. 9
Interrogatory: Identify each product made, used, sold, or offered for sale by Plaintiff that Plaintiff contends practices any claim of any Patent-in-Suit.
Objections: OWS objects to this Interrogatory to the extent it is not reasonably calculated to lead to the discovery of admissible evidence relevant to any claim or defense in this action. Whether OWS practices its own patents is not an element of any patent infringement claim and is not relevant to the validity or enforceability of the Patents-in-Suit. OWS further objects to the extent this Interrogatory seeks confidential product design information, including information regarding OWS's product architectures, fabrication processes, and design specifications, that is competitively sensitive and that may exceed the scope of relevant discovery. Subject to and without waiving these objections, OWS responds as follows:
Response:
OWS's products that practice one or more claims of the Patents-in-Suit include the following:
(a) The OWS-400ZR coherent optical transceiver chipset, designed for 400G ZR and ZR+ applications in data center interconnect and metro networking;
(b) The OWS-800LR coherent optical transceiver chipset, designed for 800G long-reach applications; and
(c) OWS's integrated silicon photonics engines for co-packaged optics ("CPO"), designed for next-generation hyperscale data center switch architectures.
These products are designed by OWS at its headquarters in San Jose, California, and are fabricated by Pinnacle Semiconductor Foundry Co., Ltd. ("Pinnacle") using Pinnacle's 45nm silicon-on-insulator (SOI) process. The OWS products incorporate the following technologies that practice respective claims of the Patents-in-Suit: (i) integrated waveguide couplers with tapered mode converters implementing the adiabatic coupling approach of the '567 Patent; (ii) germanium-on-silicon photodetectors with continuously graded buffer layers as claimed in the '234 Patent; (iii) integrated wavelength-division multiplexing elements monolithically formed on the silicon photonic die as claimed in the '678 Patent; and (iv) driver circuits for Mach-Zehnder modulators with co-integrated pre-emphasis equalization stages as claimed in the '890 Patent.
Further details regarding OWS's product designs and their correspondence to specific patent claims are subject to the Stipulated Protective Order entered by the Court on September 19, 2022 (Dkt. No. 42) and will be produced with appropriate confidentiality designations in accordance with the terms of the Order.
INTERROGATORY NO. 10
Interrogatory: State Plaintiff's total revenue, net income, and revenue attributable to products practicing the Patents-in-Suit for fiscal years 2020, 2021, and 2022.
Objections: OWS objects to this Interrogatory as overbroad and as seeking confidential financial information that is not proportional to the needs of this case. OWS is a privately held company, with approximately sixty-two percent (62%) of its outstanding equity held by Vantage Point Capital Partners Fund IV, LP. Unlike Lumos, OWS is not a publicly traded company and does not disclose its financial results in public filings. OWS's detailed revenue, net income, and product-specific financial data are competitively sensitive, proprietary business information. OWS further objects to the extent the information sought — specifically, OWS's own financial performance — is not relevant to the determination of damages for Defendant's infringement. The measure of damages in this case is a reasonable royalty based on the value of Defendant's use of OWS's patented technology, not OWS's own revenues or profitability. Subject to and without waiving these objections, OWS responds as follows:
Response:
OWS provides the following limited financial information on a non-confidential basis:
OWS's total revenue for fiscal year 2022 was approximately $187.4 million.
Revenue and net income figures for fiscal years 2020 and 2021, as well as revenue specifically attributable to individual products practicing the Patents-in-Suit, are confidential and will be produced subject to the terms of the Stipulated Protective Order entered by the Court on September 19, 2022 (Dkt. No. 42), with appropriate "Highly Confidential — Attorneys' Eyes Only" designations. OWS is in the process of gathering and compiling the responsive financial data and will produce such data in document form or in supplemental responses to this Interrogatory at the earliest practicable date.
INTERROGATORY NO. 11
Interrogatory: Identify each named inventor on each Patent-in-Suit, state their current employer and position, and describe their role in the development of the claimed inventions.
Objections: Subject to and incorporating the General Objections set forth above, OWS responds as follows:
Response:
The named inventors on each Patent-in-Suit, together with their current employer and position (to the extent known) and a description of their role in the development of the claimed inventions, are as follows:
U.S. Patent No. 10,234,567 (the '567 Patent):
(a) Dr. Kevin Fong — Chief Technology Officer and Co-Founder, currently employed by Optiwave Semiconductor Corp. Dr. Fong co-developed the integrated optical coupler with tapered silicon waveguide adiabatically coupled to a silicon nitride waveguide layer that is the subject of the '567 Patent. Dr. Fong conceived the overall architecture of the adiabatic mode converter and contributed to the design, simulation, and experimental validation of the claimed structure. Dr. Fong holds a Ph.D. in Electrical Engineering (photonics) and was formerly a principal engineer at a major semiconductor foundry prior to co-founding OWS.
(b) Dr. Priya Ramanathan — Chief Executive Officer and Co-Founder, currently employed by Optiwave Semiconductor Corp. Dr. Ramanathan co-developed the waveguide coupling approach that forms the basis of the '567 Patent, contributing to the optimization of the taper geometry and the selection of the silicon nitride waveguide layer parameters. Dr. Ramanathan holds a Ph.D. in Electrical Engineering (photonics) from Stanford University.
(c) Hideo Tanaka — Former Engineer, Optiwave Semiconductor Corp. (employed 2016–2019). Mr. Tanaka contributed to the development of the tapered mode converter design, bringing his prior expertise in segmented taper coupler structures to the team. Mr. Tanaka is also the named inventor of U.S. Patent No. 9,456,012 (issued September 6, 2016), which was invented prior to his employment at OWS and which discloses a segmented (non-adiabatic) taper approach. At OWS, Mr. Tanaka contributed to the evolution from segmented taper designs to the continuous adiabatic coupling approach claimed in the '567 Patent. OWS is in the process of verifying Mr. Tanaka's current employer information and will supplement this response accordingly.
U.S. Patent No. 10,891,234 (the '234 Patent):
(a) Dr. Kevin Fong — (see above). Dr. Fong contributed to the conception and development of the germanium-on-silicon photodetector architecture with a graded buffer layer, including the selection of the germanium concentration profile and the analysis of threading dislocation density reduction.
(b) Dr. Amara Osei — Principal Engineer, currently employed by Optiwave Semiconductor Corp. Dr. Osei was the primary developer of the germanium-on-silicon photodetector with graded buffer layer architecture that is the subject of the '234 Patent. Dr. Osei designed the continuously varying germanium concentration profile, conducted the epit

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