1014-00003 · Optiwave Semiconductor Corp · Pleadings

answer-to-counterclaims.docx DOCUMENT Litigation

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UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

I. INTRODUCTION

Plaintiff and Counterclaim Defendant Optiwave Semiconductor Corp. ("OWS"), by and through its attorneys of record, Calderwood & Harkness LLP, hereby answers the Counterclaims of Defendant and Counterclaim Plaintiff Lumos Photonics, Inc. ("Lumos"), as set forth in Lumos's Answer, Affirmative Defenses, and Counterclaims (Dkt. No. 18), filed on July 29, 2022 (the "Counterclaims"). Except as expressly admitted herein, OWS denies each and every allegation contained in the Counterclaims. To the extent any allegation in the Counterclaims is not specifically addressed herein, OWS denies that allegation. OWS further denies that Lumos is entitled to any relief whatsoever on its Counterclaims, including but not limited to any declaratory judgment of non-infringement or invalidity of any of the patents-in-suit, costs, attorneys' fees, or any other or further relief.

OWS responds to the specific allegations of the Counterclaims as follows:

II. ANSWER TO SPECIFIC ALLEGATIONS OF THE COUNTERCLAIMS

A. Response to Allegations Regarding Parties, Jurisdiction, and Venue

1. With respect to Lumos's allegations that Lumos Photonics, Inc. is a corporation organized and existing under the laws of the State of Delaware, with its corporate headquarters located at 9400 McNeil Drive, Building 7, Austin, Texas 78758, and that it maintains a fabrication facility in Hillsboro, Oregon, OWS admits that these allegations are consistent with publicly available records and filings, to the extent OWS has been able to verify the same. OWS states that these allegations pertain to Lumos's own corporate identity and status, and as such, require no substantive response from OWS. To the extent these allegations contain characterizations or implications beyond the facts stated, OWS denies the same.

2. OWS admits that it is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business at 2775 Augustine Drive, Suite 400, San Jose, California 95054.

3. OWS admits that this Court has subject matter jurisdiction over the Counterclaims pursuant to 28 U.S.C. §§ 1331 and 1338(a), to the extent those Counterclaims purport to arise under the federal patent laws, Title 35 of the United States Code.

4. OWS admits that venue is proper in this judicial district as to OWS under 28 U.S.C. § 1400(b).

5. OWS admits that it is subject to personal jurisdiction in this district.

B. Response to Allegations Regarding the Patents-in-Suit

6. OWS admits that United States Patent No. 10,234,567 ("the '567 Patent"), entitled "Integrated Waveguide Coupler with Tapered Mode Converter for Silicon Photonics Platforms," was filed on March 14, 2017 and duly issued by the United States Patent and Trademark Office on March 19, 2019. OWS further admits that it is the owner by assignment of the '567 Patent, and that the '567 Patent is valid and enforceable.

7. OWS admits that United States Patent No. 10,891,234 ("the '234 Patent"), entitled "Germanium-on-Silicon Photodetector with Graded Buffer Layer for Enhanced Responsivity," was filed on September 8, 2017 and duly issued by the United States Patent and Trademark Office on January 14, 2021. OWS further admits that it is the owner by assignment of the '234 Patent, and that the '234 Patent is valid and enforceable.

8. OWS admits that United States Patent No. 11,045,678 ("the '678 Patent"), entitled "Multi-Channel Optical Transceiver with Integrated Wavelength-Division Multiplexing on Silicon," was filed on June 22, 2018 and duly issued by the United States Patent and Trademark Office on June 29, 2021. OWS further admits that it is the owner by assignment of the '678 Patent, and that the '678 Patent is valid and enforceable.

9. OWS admits that United States Patent No. 11,312,890 ("the '890 Patent"), entitled "Driver Circuit Architecture for High-Speed Silicon Photonic Mach-Zehnder Modulators," was filed on November 15, 2018 and duly issued by the United States Patent and Trademark Office on April 26, 2022. OWS further admits that it is the owner by assignment of the '890 Patent, and that the '890 Patent is valid and enforceable.

10. OWS denies any and all allegations in the Counterclaims asserting or implying that the patents-in-suit — the '567 Patent, the '234 Patent, the '678 Patent, and the '890 Patent — are invalid, unenforceable, or not infringed by Lumos's accused products. Each of the patents-in-suit is entitled to a statutory presumption of validity under 35 U.S.C. § 282, and OWS maintains that each patent is valid, enforceable, and infringed.

C. Response to Counterclaim Count I: Declaratory Judgment of Non-Infringement of the '567 Patent

11. OWS denies that Lumos's LumosBridge™ 800G Optical Engine and/or LumosEdge™ 400ZR+ Pluggable Transceiver (collectively, the "Accused Products") do not infringe Claims 1, 4, 7, 12, and 15 of the '567 Patent, either literally or under the doctrine of equivalents. OWS affirmatively states that one or more of the Accused Products infringe one or more of the asserted claims of the '567 Patent.

12. OWS denies that Lumos is entitled to a declaratory judgment of non-infringement of any claim of the '567 Patent. The allegations contained in the Counterclaims do not provide a sufficient basis for such relief.

13. OWS denies any and all allegations that Lumos's Accused Products, which employ waveguide coupling architectures and tapered mode converter designs, do not practice one or more of the inventions claimed in the '567 Patent. OWS's investigation and analysis, including review of publicly available product documentation, technical specifications, datasheets, application notes, and promotional materials regarding the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver, support OWS's contention that these products practice the claimed inventions of the '567 Patent.

14. To the extent Lumos's Counterclaims describe or characterize the internal technical details, design specifications, fabrication processes, or structural configurations of Lumos's Accused Products — including the specific geometry of any waveguide coupler, taper profile, or mode converter — OWS states that it lacks sufficient knowledge or information to form a belief as to the truth of such allegations, insofar as such details have not yet been produced or made available through discovery in this action, and OWS therefore denies the same. OWS reserves the right to amend or supplement its responses as additional information becomes available through the discovery process.

15. OWS admits that, in its Complaint filed in this action (Dkt. No. 1), OWS asserted Claims 1, 4, 7, 12, and 15 of the '567 Patent against the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver.

D. Response to Counterclaim Count II: Declaratory Judgment of Non-Infringement of the '234 Patent

16. OWS denies that Lumos's Accused Products do not infringe Claims 1, 3, 5, 8, and 11 of the '234 Patent, either literally or under the doctrine of equivalents. OWS affirmatively states that one or more of the Accused Products infringe one or more of the asserted claims of the '234 Patent.

17. OWS denies that Lumos is entitled to a declaratory judgment of non-infringement of any claim of the '234 Patent. The allegations set forth in the Counterclaims fail to establish a basis for such relief.

18. To the extent Lumos's Counterclaims describe or characterize the specific internal germanium photodetector architecture, graded buffer layer structure, epitaxial growth parameters, or related design and fabrication details of Lumos's Accused Products, OWS states that it lacks sufficient knowledge or information to form a belief as to the truth of such allegations, insofar as such details have not been produced or disclosed in discovery in this action, and OWS therefore denies the same. OWS reserves the right to amend or supplement its responses as discovery proceeds.

19. OWS admits that, in its Complaint filed in this action, OWS asserted Claims 1, 3, 5, 8, and 11 of the '234 Patent against Lumos's Accused Products.

E. Response to Counterclaim Count III: Declaratory Judgment of Non-Infringement of the '678 Patent

20. OWS denies that Lumos's Accused Products do not infringe Claims 1, 2, 6, 9, and 14 of the '678 Patent, either literally or under the doctrine of equivalents. OWS affirmatively states that one or more of the Accused Products infringe one or more of the asserted claims of the '678 Patent.

21. OWS denies that Lumos is entitled to a declaratory judgment of non-infringement of any claim of the '678 Patent.

22. With respect to allegations regarding whether Lumos's 800G platform utilizes heterogeneous integration techniques, monolithic integration techniques, or any other specific fabrication methodology, OWS states that it lacks sufficient knowledge or information to form a belief as to the truth of such allegations, insofar as the specific design details, integration approaches, and fabrication specifications of Lumos's Accused Products have not been produced or made available in discovery. OWS therefore denies the same. OWS reserves the right to amend or supplement its responses upon receipt of additional information through the discovery process.

23. OWS admits that, in its Complaint filed in this action, OWS asserted Claims 1, 2, 6, 9, and 14 of the '678 Patent against Lumos's Accused Products.

F. Response to Counterclaim Count IV: Declaratory Judgment of Non-Infringement of the '890 Patent

24. OWS denies that Lumos's Accused Products do not infringe Claims 1, 5, 8, and 13 of the '890 Patent, either literally or under the doctrine of equivalents. OWS affirmatively states that one or more of the Accused Products infringe one or more of the asserted claims of the '890 Patent.

25. OWS denies that Lumos is entitled to a declaratory judgment of non-infringement of any claim of the '890 Patent.

26. With respect to allegations concerning the specific driver circuit architecture, modulator co-integration methodology, and related design or fabrication details of Lumos's Accused Products — including the specific topology, layout, and co-packaging arrangement of any driver circuit and any silicon photonic Mach-Zehnder modulator — OWS states that it lacks sufficient knowledge or information to form a belief as to the truth of such allegations, insofar as such design details, integration specifications, and fabrication processes have not been produced or disclosed in discovery in this action. OWS therefore denies the same. OWS reserves the right to amend or supplement its responses as additional information becomes available through the discovery process.

27. OWS admits that, in its Complaint filed in this action, OWS asserted Claims 1, 5, 8, and 13 of the '890 Patent against Lumos's Accused Products.

G. Response to Counterclaim Count V: Declaratory Judgment of Invalidity of the '567 Patent Under 35 U.S.C. § 102

28. OWS denies that any claim of the '567 Patent, including Claims 1, 4, 7, 12, and 15, is invalid under 35 U.S.C. § 102 for anticipation by any prior art reference, individually or collectively.

29. OWS specifically denies that the prior art cited by Lumos, including United States Patent No. 9,456,012 to Tanaka et al. (issued September 6, 2016) (hereinafter "Tanaka"), anticipates any asserted claim of the '567 Patent. The Tanaka reference was considered by the United States Patent and Trademark Office during prosecution of the '567 Patent, and the claims were allowed over Tanaka.

30. OWS affirmatively states that the '567 Patent is entitled to the statutory presumption of validity under 35 U.S.C. § 282, and that Lumos bears the heavy burden of proving invalidity by clear and convincing evidence, as established by Kestrel Partners LLC v. i4i Ltd. Partnership, 564 U.S. 91 (2011). Lumos cannot satisfy this burden.

31. OWS further notes that during prosecution of the '567 Patent, the claims underwent two office action rejections in which the Examiner cited the Tanaka reference, among others. In response, the applicant narrowed the claims to include the "adiabatically coupled" limitation, which specifies a particular coupling mechanism that is structurally and functionally distinct from the coupling approach disclosed in Tanaka. The Examiner considered this amendment, along with the applicant's accompanying remarks and the teachings of the prior art, and allowed the claims as issued. The claims of the '567 Patent as issued are patentably distinct from the Tanaka reference and from all other prior art of record.

H. Response to Counterclaim Count VI: Declaratory Judgment of Invalidity of the '567 Patent Under 35 U.S.C. § 103

32. OWS denies that any asserted claim of the '567 Patent is invalid as obvious under 35 U.S.C. § 103. OWS denies that any combination of prior art references renders the asserted claims of the '567 Patent obvious to a person having ordinary skill in the art at the time of the invention.

33. OWS specifically denies that the combination of United States Patent No. 9,456,012 to Tanaka et al. with the publication by 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) (hereinafter "Chen & Liu"), renders any asserted claim of the '567 Patent obvious, whether taken alone or in further combination with any other prior art references. The skilled artisan would not have been motivated to combine Tanaka and Chen & Liu in the manner alleged by Lumos, and even if such a combination were attempted, the resulting combination would not disclose or suggest all elements of the asserted claims, including the "adiabatically coupled" limitation.

34. OWS affirmatively states that the '567 Patent is entitled to the statutory presumption of validity under 35 U.S.C. § 282. Lumos bears the burden of proving obviousness by clear and convincing evidence, and this burden is heightened where, as here, the prior art relied upon by Lumos was considered during prosecution. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 426 (2007) (requiring an articulated reasoning with rational underpinning to combine prior art teachings); In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016).

I. Response to Counterclaim Count VII: Declaratory Judgment of Invalidity of the '234 Patent Under 35 U.S.C. § 102

35. OWS denies that any asserted claim of the '234 Patent, including Claims 1, 3, 5, 8, and 11, is invalid under 35 U.S.C. § 102 for anticipation by any prior art reference.

36. OWS specifically denies that European Patent Application EP 3,234,567 A1 (published August 2, 2017, applicant: Nordlicht Photonische GmbH) (hereinafter "Nordlicht") anticipates any asserted claim of the '234 Patent under 35 U.S.C. § 102(a)(2) or any other subsection of § 102. The Nordlicht reference does not disclose each and every limitation of any asserted claim of the '234 Patent, and Lumos cannot demonstrate otherwise.

37. OWS affirmatively states that the '234 Patent is entitled to the statutory presumption of validity under 35 U.S.C. § 282. Lumos bears the burden of proving anticipation by clear and convincing evidence, which requires a showing that a single prior art reference discloses each and every element of the claimed invention, arranged as in the claim. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Lumos cannot meet this exacting standard with respect to the Nordlicht reference or any other prior art.

J. Response to Counterclaim Count VIII: Declaratory Judgment of Invalidity of the '234 Patent Under 35 U.S.C. § 103

38. OWS denies that any asserted claim of the '234 Patent is invalid as obvious under 35 U.S.C. § 103, whether based on European Patent Application EP 3,234,567 A1 (Nordlicht) or any other combination of prior art references cited or relied upon by Lumos in its Counterclaims.

39. OWS affirmatively states that the '234 Patent is entitled to the statutory presumption of validity under 35 U.S.C. § 282, and that Lumos bears the burden of proving obviousness by clear and convincing evidence. The asserted claims of the '234 Patent, including the specific combination of a germanium-on-silicon photodetector with a graded buffer layer configured for enhanced responsivity as claimed, are not rendered obvious by the prior art. A person of ordinary skill in the art would not have been motivated to combine the references cited by Lumos in the manner necessary to arrive at the claimed inventions, and doing so would not have yielded a reasonable expectation of success.

K. Response to Counterclaim Count IX: Declaratory Judgment of Invalidity of the '678 Patent Under 35 U.S.C. §§ 102 and 103

40. OWS denies that any asserted claim of the '678 Patent, including Claims 1, 2, 6, 9, and 14, is invalid under 35 U.S.C. § 102 for anticipation or under 35 U.S.C. § 103 for obviousness, based on any prior art reference or combination of references cited or relied upon by Lumos.

41. OWS notes that during prosecution of the '678 Patent, the claims underwent three office actions in which various prior art references relating to hybrid integration techniques for multi-channel optical transceivers were cited and considered. In response to these office actions, the applicant amended the claims to include the "monolithically formed" limitation, which requires that the claimed wavelength-division multiplexing components and transceiver elements be monolithically formed on a single silicon substrate, as distinguished from prior art approaches based on hybrid integration — i.e., the separate fabrication and subsequent assembly of discrete optical and electronic components. The Examiner considered this amendment and the accompanying remarks and allowed the claims as issued. The "monolithically formed" limitation renders the claims of the '678 Patent patentably distinct from the hybrid integration prior art cited by Lumos.

42. OWS affirmatively states that the '678 Patent is entitled to the statutory presumption of validity under 35 U.S.C. § 282, and that Lumos bears the burden of proving invalidity by clear and convincing evidence. Lumos cannot meet this burden.

L. Response to Counterclaim Count X: Declaratory Judgment of Invalidity of the '890 Patent Under 35 U.S.C. § 103

43. OWS denies that any asserted claim of the '890 Patent, including Claims 1, 5, 8, and 13, is invalid as obvious under 35 U.S.C. § 103, whether based on a single prior art reference or any combination of prior art references.

44. OWS specifically denies that the publication by Iyer & Patel, "Co-Design of Modulator Drivers and Silicon Photonic Mach-Zehnder Structures," IEEE Transactions on Circuits and Systems, Vol. 65, No. 8, pp. 2701–2713 (2018) (hereinafter "Iyer & Patel"), alone or in combination with any other prior art, renders any asserted claim of the '890 Patent obvious. Iyer & Patel describes the co-design of modulator drivers and silicon photonic Mach-Zehnder structures as separately fabricated components that are subsequently bonded or assembled together, and does not teach or suggest the "co-integrated" limitation recited in the asserted claims of the '890 Patent.

45. OWS notes that during prosecution of the '890 Patent, the claims underwent two office actions. In response, the applicant amended the claims to include the "co-integrated" limitation, which requires that the driver circuit and the silicon photonic Mach-Zehnder modulator be co-integrated on a common substrate through a unified fabrication process, as distinguished from approaches where the driver circuit and modulator are separately fabricated and thereafter bonded, flip-chipped, or otherwise assembled. The Examiner considered this amendment and allowed the claims as issued, confirming that the claims are patentably distinct from the prior art of record.

46. OWS affirmatively states that the '890 Patent is entitled to the statutory presumption of validity under 35 U.S.C. § 282, and that Lumos bears the burden of proving obviousness by clear and convincing evidence. Lumos cannot satisfy this burden.

M. Response to Counterclaim Count XI: Declaratory Judgment of Invalidity Under 35 U.S.C. § 112

47. OWS denies that any asserted claim of any of the four patents-in-suit — the '567 Patent, the '234 Patent, the '678 Patent, and the '890 Patent — is invalid under 35 U.S.C. § 112 for failure to comply with the written description requirement of § 112(a), the enablement requirement of § 112(a), or the definiteness requirement of § 112(b).

48. OWS affirmatively states that the specifications of each of the patents-in-suit provide a written description of the claimed inventions that is sufficient to demonstrate to a person of ordinary skill in the art that the inventors were in possession of the claimed inventions at the time of filing. The specifications disclose detailed embodiments, structural descriptions, fabrication processes, performance data, and figures that fully support the asserted claims.

49. OWS further states that the specifications of each of the patents-in-suit enable a person of ordinary skill in the art to make and use the claimed inventions without undue experimentation. The specifications include sufficient detail regarding materials, dimensions, fabrication techniques, process parameters, and operational principles to allow practice of the claimed inventions.

50. OWS further states that the claims of each of the patents-in-suit are sufficiently definite to inform those skilled in the art about the scope of the respective inventions with reasonable certainty, as required by Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014). The claim terms used in the asserted claims, including but not limited to "adiabatically coupled," "graded buffer layer," "monolithically formed," and "co-integrated," are terms that have well-understood meanings to those skilled in the relevant art of silicon photonics and integrated circuit design.

51. OWS affirmatively asserts the presumption of validity of each of the patents-in-suit under 35 U.S.C. § 282. Lumos bears the burden of proving invalidity under § 112 by clear and convincing evidence, which it cannot meet.

N. Response to Prayer for Relief in the Counterclaims

52. OWS denies that Lumos is entitled to any of the relief requested in its Counterclaims, including but not limited to declaratory judgments of non-infringement of any claim of any of the patents-in-suit, declaratory judgments of invalidity of any claim of any of the patents-in-suit, an award of costs and attorneys' fees, or any other or further relief.

53. OWS denies that Lumos is entitled to an award of its costs and attorneys' fees under 35 U.S.C. § 285 or any other provision of law. This case is not an "exceptional case" within the meaning of § 285, and Lumos has presented no basis for such an award.

54. OWS denies that Lumos is entitled to any other or further relief beyond that specifically requested in the Counterclaims, or to any relief at all.

III. AFFIRMATIVE DEFENSES TO COUNTERCLAIMS

Without assuming the burden of proof on any issue for which Lumos bears the burden, and without waiving any objections, including objections as to relevance, materiality, or admissibility, OWS asserts the following affirmative defenses to the Counterclaims:

FIRST AFFIRMATIVE DEFENSE: Failure to State a Claim

Lumos's Counterclaims, in whole or in part, fail to state a claim upon which relief can be granted under Federal Rule of Civil Procedure 12(b)(6). To the extent that any of Lumos's Counterclaims rest upon conclusory allegations, unsupported legal theories, or insufficient factual predicates, they should be dismissed. OWS reserves the right to bring a motion under Rule 12(b)(6) at the appropriate time.

SECOND AFFIRMATIVE DEFENSE: Presumption of Validity

Each of the patents-in-suit — United States Patent Nos. 10,234,567; 10,891,234; 11,045,678; and 11,312,890 — was duly and regularly issued by the United States Patent and Trademark Office after examination and is presumed valid under 35 U.S.C. § 282. This statutory presumption of validity applies to each claim of each patent and can only be overcome by clear and convincing evidence. See Kestrel Partners LLC v. i4i Ltd. Partnership, 564 U.S. 91 (2011). Lumos bears the burden of proving invalidity by clear and convincing evidence as to each claim of each patent it challenges, and it cannot meet that burden.

THIRD AFFIRMATIVE DEFENSE: Infringement

Lumos's LumosBridge™ 800G Optical Engine and LumosEdge™ 400ZR+ Pluggable Transceiver products infringe one or more asserted claims of each of the four patents-in-suit, either literally or under the doctrine of equivalents, or both. OWS's Complaint sets forth detailed allegations of infringement, and the factual record, as developed through investigation and as to be further developed through discovery, supports OWS's infringement contentions. Lumos's Counterclaims seeking declaratory judgments of non-infringement are therefore without merit and should be denied.

FOURTH AFFIRMATIVE DEFENSE: Prosecution History Supports Validity

The prosecution histories of the patents-in-suit, including all amendments, remarks, declarations, and examiner correspondence made during prosecution before the United States Patent and Trademark Office, confirm that the claims as issued are valid over the prior art considered by the Examiner, including the very prior art now cited by Lumos in its Counterclaims. Specifically:

(a) The '567 Patent. The '567 Patent underwent two office action rejections during prosecution, in which the Examiner cited, among other references, U.S. Patent No. 9,456,012 to Tanaka et al. In response, the applicant narrowed the claims to include the "adiabatically coupled" limitation to overcome the Tanaka reference and distinguish the claimed invention from the coupling approach disclosed therein. The Examiner considered the amendment and the applicant's accompanying remarks and allowed the claims as issued. The claims of the '567 Patent remain valid and patentably distinct from Tanaka and from all other prior art of record.

(b) The '234 Patent. The '234 Patent was allowed on first office action following an examiner interview conducted on October 22, 2020, at which the applicant discussed the scope and novelty of the claimed germanium-on-silicon photodetector with graded buffer layer. The Examiner considered the prior art of record and allowed the claims without rejection.

(c) The '678 Patent. The '678 Patent underwent three office actions during prosecution, in which the Examiner cited various prior art references directed to hybrid integration approaches for multi-channel optical transceivers. In response, the applicant amended the claims to include the "monolithically formed" limitation, specifying that the claimed wavelength-division multiplexing components and transceiver elements are monolithically formed on a single silicon substrate. This amendment was expressly made to distinguish the claimed invention from prior art based on hybrid integration — i.e., the separate fabrication and subsequent assembly of discrete optical and electronic components. The Examiner considered this amendment and the applicant's remarks and allowed the claims as issued.

(d) The '890 Patent. The '890 Patent underwent two office actions during prosecution. In response, the applicant amended the claims to add the "co-integrated" limitation, requiring that the driver circuit and the silicon photonic Mach-Zehnder modulator be co-integrated on a common substrate through a unified fabrication process. This limitation distinguishes the claimed invention from prior art approaches in which driver circuits and modulators are separately fabricated and then bonded, flip-chipped, or otherwise assembled together. The Examiner considered this amendment and allowed the claims as issued.

The foregoing prosecution histories confirm that the claims of each patent-in-suit were carefully considered by the United States Patent and Trademark Office and that the claims as issued are valid and patentably distinct from the prior art of record.

FIFTH AFFIRMATIVE DEFENSE: Waiver, Estoppel, and Laches (Reserved)

To the extent applicable, Lumos's Counterclaims may be barred, in whole or in part, by the doctrines of waiver, estoppel, and/or laches. Discovery has not yet been completed in this action, and OWS reserves the right to assert these defenses more fully as additional facts become known.

SIXTH AFFIRMATIVE DEFENSE: Reservation of Defenses

OWS reserves the right to assert additional affirmative defenses as may become apparent through the course of discovery, further investigation, claim construction proceedings, and other developments in this action. OWS does not intend, by the assertion of the foregoing defenses, to assume the burden of proof on any issue for which Lumos bears the burden of proof under applicable law.

IV. PRAYER FOR RELIEF

WHEREFORE, Plaintiff and Counterclaim Defendant Optiwave Semiconductor Corp. respectfully requests that the Court enter judgment as follows:

1. That all relief sought by Lumos in its Counterclaims be denied in its entirety;

2. That each and every one of Lumos's Counterclaims be dismissed with prejudice;

3. That judgment be entered in favor of OWS and against Lumos on all of Lumos's Counterclaims;

4. That OWS be awarded its costs of suit incurred in defending against the Counterclaims, including reasonable attorneys' fees to the extent permitted by law; and

5. That OWS be granted such other and further relief as the Court deems just and proper.

V. JURY DEMAND

Pursuant to Federal Rule of Civil Procedure 38 and the Seventh Amendment to the United States Constitution, Plaintiff and Counterclaim Defendant Optiwave Semiconductor Corp. hereby demands a trial by jury on all issues so triable in connection with Lumos's Counterclaims, including but not limited to all issues relating to infringement, validity, enforceability, and damages.

Respectfully submitted,

Dated: August 26, 2022

CALDERWOOD & HARKNESS LLP

By: ________

Alan Ngo (Cal. Bar No. 287415; USPTO Reg. No. 52,871) One Embarcadero Center, 34th Floor San Francisco, California 94111 Telephone: (415) 773-5500 Facsimile: (415) 773-5501

Email: ango@calderwoodharkness.com

Omar Siddiqui (Cal. Bar No. 304228)

Email: osiddiqui@calderwoodharkness.com

Christy Bauer (Cal. Bar No. 311674)

Email: cbauer@calderwoodharkness.com

Attorneys for Plaintiff and Counterclaim Defendant Optiwave Semiconductor Corp.

CERTIFICATE OF SERVICE

I hereby certify that on August 26, 2022, a true and correct copy of the foregoing PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S ANSWER TO DEFENDANT LUMOS PHOTONICS, INC.'S COUNTERCLAIMS was served on all counsel of record via the Court's CM/ECF electronic filing system, which will send a Notice of Electronic Filing to the following:

Victoria "Tori" Ashworth Brannick Howell & Stein LLP 555 California Street, Suite 2800 San Francisco, California 94104 Telephone: (415) 986-4000

Email: tashworth@bhslaw.com

Daniel Kowalski Brannick Howell & Stein LLP 555 California Street, Suite 2800 San Francisco, California 94104 Telephone: (415) 986-4000

Email: dkowalski@bhslaw.com

Counsel of Record for Defendant and Counterclaim Plaintiff Lumos Photonics, Inc.

By: ________

Alan Ngo

OPTIWAVE SEMICONDUCTOR CORP., a Delaware corporation,	Case No. 5:22-cv-03417-EJD
Plaintiff and Counterclaim Defendant,	Hon. Edward J. Torvelis
v.	PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S ANSWER TO DEFENDANT LUMOS PHOTONICS, INC.'S COUNTERCLAIMS

LUMOS PHOTONICS, INC., a Delaware corporation,

Defendant and Counterclaim Plaintiff.

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
I. INTRODUCTION
Plaintiff and Counterclaim Defendant Optiwave Semiconductor Corp. ("OWS"), by and through its attorneys of record, Calderwood & Harkness LLP, hereby answers the Counterclaims of Defendant and Counterclaim Plaintiff Lumos Photonics, Inc. ("Lumos"), as set forth in Lumos's Answer, Affirmative Defenses, and Counterclaims (Dkt. No. 18), filed on July 29, 2022 (the "Counterclaims"). Except as expressly admitted herein, OWS denies each and every allegation contained in the Counterclaims. To the extent any allegation in the Counterclaims is not specifically addressed herein, OWS denies that allegation. OWS further denies that Lumos is entitled to any relief whatsoever on its Counterclaims, including but not limited to any declaratory judgment of non-infringement or invalidity of any of the patents-in-suit, costs, attorneys' fees, or any other or further relief.
OWS responds to the specific allegations of the Counterclaims as follows:
II. ANSWER TO SPECIFIC ALLEGATIONS OF THE COUNTERCLAIMS
A. Response to Allegations Regarding Parties, Jurisdiction, and Venue
1. With respect to Lumos's allegations that Lumos Photonics, Inc. is a corporation organized and existing under the laws of the State of Delaware, with its corporate headquarters located at 9400 McNeil Drive, Building 7, Austin, Texas 78758, and that it maintains a fabrication facility in Hillsboro, Oregon, OWS admits that these allegations are consistent with publicly available records and filings, to the extent OWS has been able to verify the same. OWS states that these allegations pertain to Lumos's own corporate identity and status, and as such, require no substantive response from OWS. To the extent these allegations contain characterizations or implications beyond the facts stated, OWS denies the same.
2. OWS admits that it is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business at 2775 Augustine Drive, Suite 400, San Jose, California 95054.
3. OWS admits that this Court has subject matter jurisdiction over the Counterclaims pursuant to 28 U.S.C. §§ 1331 and 1338(a), to the extent those Counterclaims purport to arise under the federal patent laws, Title 35 of the United States Code.
4. OWS admits that venue is proper in this judicial district as to OWS under 28 U.S.C. § 1400(b).
5. OWS admits that it is subject to personal jurisdiction in this district.
B. Response to Allegations Regarding the Patents-in-Suit
6. OWS admits that United States Patent No. 10,234,567 ("the '567 Patent"), entitled "Integrated Waveguide Coupler with Tapered Mode Converter for Silicon Photonics Platforms," was filed on March 14, 2017 and duly issued by the United States Patent and Trademark Office on March 19, 2019. OWS further admits that it is the owner by assignment of the '567 Patent, and that the '567 Patent is valid and enforceable.
7. OWS admits that United States Patent No. 10,891,234 ("the '234 Patent"), entitled "Germanium-on-Silicon Photodetector with Graded Buffer Layer for Enhanced Responsivity," was filed on September 8, 2017 and duly issued by the United States Patent and Trademark Office on January 14, 2021. OWS further admits that it is the owner by assignment of the '234 Patent, and that the '234 Patent is valid and enforceable.
8. OWS admits that United States Patent No. 11,045,678 ("the '678 Patent"), entitled "Multi-Channel Optical Transceiver with Integrated Wavelength-Division Multiplexing on Silicon," was filed on June 22, 2018 and duly issued by the United States Patent and Trademark Office on June 29, 2021. OWS further admits that it is the owner by assignment of the '678 Patent, and that the '678 Patent is valid and enforceable.
9. OWS admits that United States Patent No. 11,312,890 ("the '890 Patent"), entitled "Driver Circuit Architecture for High-Speed Silicon Photonic Mach-Zehnder Modulators," was filed on November 15, 2018 and duly issued by the United States Patent and Trademark Office on April 26, 2022. OWS further admits that it is the owner by assignment of the '890 Patent, and that the '890 Patent is valid and enforceable.
10. OWS denies any and all allegations in the Counterclaims asserting or implying that the patents-in-suit — the '567 Patent, the '234 Patent, the '678 Patent, and the '890 Patent — are invalid, unenforceable, or not infringed by Lumos's accused products. Each of the patents-in-suit is entitled to a statutory presumption of validity under 35 U.S.C. § 282, and OWS maintains that each patent is valid, enforceable, and infringed.
C. Response to Counterclaim Count I: Declaratory Judgment of Non-Infringement of the '567 Patent
11. OWS denies that Lumos's LumosBridge™ 800G Optical Engine and/or LumosEdge™ 400ZR+ Pluggable Transceiver (collectively, the "Accused Products") do not infringe Claims 1, 4, 7, 12, and 15 of the '567 Patent, either literally or under the doctrine of equivalents. OWS affirmatively states that one or more of the Accused Products infringe one or more of the asserted claims of the '567 Patent.
12. OWS denies that Lumos is entitled to a declaratory judgment of non-infringement of any claim of the '567 Patent. The allegations contained in the Counterclaims do not provide a sufficient basis for such relief.
13. OWS denies any and all allegations that Lumos's Accused Products, which employ waveguide coupling architectures and tapered mode converter designs, do not practice one or more of the inventions claimed in the '567 Patent. OWS's investigation and analysis, including review of publicly available product documentation, technical specifications, datasheets, application notes, and promotional materials regarding the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver, support OWS's contention that these products practice the claimed inventions of the '567 Patent.
14. To the extent Lumos's Counterclaims describe or characterize the internal technical details, design specifications, fabrication processes, or structural configurations of Lumos's Accused Products — including the specific geometry of any waveguide coupler, taper profile, or mode converter — OWS states that it lacks sufficient knowledge or information to form a belief as to the truth of such allegations, insofar as such details have not yet been produced or made available through discovery in this action, and OWS therefore denies the same. OWS reserves the right to amend or supplement its responses as additional information becomes available through the discovery process.
15. OWS admits that, in its Complaint filed in this action (Dkt. No. 1), OWS asserted Claims 1, 4, 7, 12, and 15 of the '567 Patent against the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver.
D. Response to Counterclaim Count II: Declaratory Judgment of Non-Infringement of the '234 Patent
16. OWS denies that Lumos's Accused Products do not infringe Claims 1, 3, 5, 8, and 11 of the '234 Patent, either literally or under the doctrine of equivalents. OWS affirmatively states that one or more of the Accused Products infringe one or more of the asserted claims of the '234 Patent.
17. OWS denies that Lumos is entitled to a declaratory judgment of non-infringement of any claim of the '234 Patent. The allegations set forth in the Counterclaims fail to establish a basis for such relief.
18. To the extent Lumos's Counterclaims describe or characterize the specific internal germanium photodetector architecture, graded buffer layer structure, epitaxial growth parameters, or related design and fabrication details of Lumos's Accused Products, OWS states that it lacks sufficient knowledge or information to form a belief as to the truth of such allegations, insofar as such details have not been produced or disclosed in discovery in this action, and OWS therefore denies the same. OWS reserves the right to amend or supplement its responses as discovery proceeds.
19. OWS admits that, in its Complaint filed in this action, OWS asserted Claims 1, 3, 5, 8, and 11 of the '234 Patent against Lumos's Accused Products.
E. Response to Counterclaim Count III: Declaratory Judgment of Non-Infringement of the '678 Patent
20. OWS denies that Lumos's Accused Products do not infringe Claims 1, 2, 6, 9, and 14 of the '678 Patent, either literally or under the doctrine of equivalents. OWS affirmatively states that one or more of the Accused Products infringe one or more of the asserted claims of the '678 Patent.
21. OWS denies that Lumos is entitled to a declaratory judgment of non-infringement of any claim of the '678 Patent.
22. With respect to allegations regarding whether Lumos's 800G platform utilizes heterogeneous integration techniques, monolithic integration techniques, or any other specific fabrication methodology, OWS states that it lacks sufficient knowledge or information to form a belief as to the truth of such allegations, insofar as the specific design details, integration approaches, and fabrication specifications of Lumos's Accused Products have not been produced or made available in discovery. OWS therefore denies the same. OWS reserves the right to amend or supplement its responses upon receipt of additional information through the discovery process.
23. OWS admits that, in its Complaint filed in this action, OWS asserted Claims 1, 2, 6, 9, and 14 of the '678 Patent against Lumos's Accused Products.
F. Response to Counterclaim Count IV: Declaratory Judgment of Non-Infringement of the '890 Patent
24. OWS denies that Lumos's Accused Products do not infringe Claims 1, 5, 8, and 13 of the '890 Patent, either literally or under the doctrine of equivalents. OWS affirmatively states that one or more of the Accused Products infringe one or more of the asserted claims of the '890 Patent.
25. OWS denies that Lumos is entitled to a declaratory judgment of non-infringement of any claim of the '890 Patent.
26. With respect to allegations concerning the specific driver circuit architecture, modulator co-integration methodology, and related design or fabrication details of Lumos's Accused Products — including the specific topology, layout, and co-packaging arrangement of any driver circuit and any silicon photonic Mach-Zehnder modulator — OWS states that it lacks sufficient knowledge or information to form a belief as to the truth of such allegations, insofar as such design details, integration specifications, and fabrication processes have not been produced or disclosed in discovery in this action. OWS therefore denies the same. OWS reserves the right to amend or supplement its responses as additional information becomes available through the discovery process.
27. OWS admits that, in its Complaint filed in this action, OWS asserted Claims 1, 5, 8, and 13 of the '890 Patent against Lumos's Accused Products.
G. Response to Counterclaim Count V: Declaratory Judgment of Invalidity of the '567 Patent Under 35 U.S.C. § 102
28. OWS denies that any claim of the '567 Patent, including Claims 1, 4, 7, 12, and 15, is invalid under 35 U.S.C. § 102 for anticipation by any prior art reference, individually or collectively.
29. OWS specifically denies that the prior art cited by Lumos, including United States Patent No. 9,456,012 to Tanaka et al. (issued September 6, 2016) (hereinafter "Tanaka"), anticipates any asserted claim of the '567 Patent. The Tanaka reference was considered by the United States Patent and Trademark Office during prosecution of the '567 Patent, and the claims were allowed over Tanaka.
30. OWS affirmatively states that the '567 Patent is entitled to the statutory presumption of validity under 35 U.S.C. § 282, and that Lumos bears the heavy burden of proving invalidity by clear and convincing evidence, as established by Kestrel Partners LLC v. i4i Ltd. Partnership, 564 U.S. 91 (2011). Lumos cannot satisfy this burden.
31. OWS further notes that during prosecution of the '567 Patent, the claims underwent two office action rejections in which the Examiner cited the Tanaka reference, among others. In response, the applicant narrowed the claims to include the "adiabatically coupled" limitation, which specifies a particular coupling mechanism that is structurally and functionally distinct from the coupling approach disclosed in Tanaka. The Examiner considered this amendment, along with the applicant's accompanying remarks and the teachings of the prior art, and allowed the claims as issued. The claims of the '567 Patent as issued are patentably distinct from the Tanaka reference and from all other prior art of record.
H. Response to Counterclaim Count VI: Declaratory Judgment of Invalidity of the '567 Patent Under 35 U.S.C. § 103
32. OWS denies that any asserted claim of the '567 Patent is invalid as obvious under 35 U.S.C. § 103. OWS denies that any combination of prior art references renders the asserted claims of the '567 Patent obvious to a person having ordinary skill in the art at the time of the invention.
33. OWS specifically denies that the combination of United States Patent No. 9,456,012 to Tanaka et al. with the publication by 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) (hereinafter "Chen & Liu"), renders any asserted claim of the '567 Patent obvious, whether taken alone or in further combination with any other prior art references. The skilled artisan would not have been motivated to combine Tanaka and Chen & Liu in the manner alleged by Lumos, and even if such a combination were attempted, the resulting combination would not disclose or suggest all elements of the asserted claims, including the "adiabatically coupled" limitation.
34. OWS affirmatively states that the '567 Patent is entitled to the statutory presumption of validity under 35 U.S.C. § 282. Lumos bears the burden of proving obviousness by clear and convincing evidence, and this burden is heightened where, as here, the prior art relied upon by Lumos was considered during prosecution. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 426 (2007) (requiring an articulated reasoning with rational underpinning to combine prior art teachings); In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016).
I. Response to Counterclaim Count VII: Declaratory Judgment of Invalidity of the '234 Patent Under 35 U.S.C. § 102
35. OWS denies that any asserted claim of the '234 Patent, including Claims 1, 3, 5, 8, and 11, is invalid under 35 U.S.C. § 102 for anticipation by any prior art reference.
36. OWS specifically denies that European Patent Application EP 3,234,567 A1 (published August 2, 2017, applicant: Nordlicht Photonische GmbH) (hereinafter "Nordlicht") anticipates any asserted claim of the '234 Patent under 35 U.S.C. § 102(a)(2) or any other subsection of § 102. The Nordlicht reference does not disclose each and every limitation of any asserted claim of the '234 Patent, and Lumos cannot demonstrate otherwise.
37. OWS affirmatively states that the '234 Patent is entitled to the statutory presumption of validity under 35 U.S.C. § 282. Lumos bears the burden of proving anticipation by clear and convincing evidence, which requires a showing that a single prior art reference discloses each and every element of the claimed invention, arranged as in the claim. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Lumos cannot meet this exacting standard with respect to the Nordlicht reference or any other prior art.
J. Response to Counterclaim Count VIII: Declaratory Judgment of Invalidity of the '234 Patent Under 35 U.S.C. § 103
38. OWS denies that any asserted claim of the '234 Patent is invalid as obvious under 35 U.S.C. § 103, whether based on European Patent Application EP 3,234,567 A1 (Nordlicht) or any other combination of prior art references cited or relied upon by Lumos in its Counterclaims.
39. OWS affirmatively states that the '234 Patent is entitled to the statutory presumption of validity under 35 U.S.C. § 282, and that Lumos bears the burden of proving obviousness by clear and convincing evidence. The asserted claims of the '234 Patent, including the specific combination of a germanium-on-silicon photodetector with a graded buffer layer configured for enhanced responsivity as claimed, are not rendered obvious by the prior art. A person of ordinary skill in the art would not have been motivated to combine the references cited by Lumos in the manner necessary to arrive at the claimed inventions, and doing so would not have yielded a reasonable expectation of success.
K. Response to Counterclaim Count IX: Declaratory Judgment of Invalidity of the '678 Patent Under 35 U.S.C. §§ 102 and 103
40. OWS denies that any asserted claim of the '678 Patent, including Claims 1, 2, 6, 9, and 14, is invalid under 35 U.S.C. § 102 for anticipation or under 35 U.S.C. § 103 for obviousness, based on any prior art reference or combination of references cited or relied upon by Lumos.
41. OWS notes that during prosecution of the '678 Patent, the claims underwent three office actions in which various prior art references relating to hybrid integration techniques for multi-channel optical transceivers were cited and considered. In response to these office actions, the applicant amended the claims to include the "monolithically formed" limitation, which requires that the claimed wavelength-division multiplexing components and transceiver elements be monolithically formed on a single silicon substrate, as distinguished from prior art approaches based on hybrid integration — i.e., the separate fabrication and subsequent assembly of discrete optical and electronic components. The Examiner considered this amendment and the accompanying remarks and allowed the claims as issued. The "monolithically formed" limitation renders the claims of the '678 Patent patentably distinct from the hybrid integration prior art cited by Lumos.
42. OWS affirmatively states that the '678 Patent is entitled to the statutory presumption of validity under 35 U.S.C. § 282, and that Lumos bears the burden of proving invalidity by clear and convincing evidence. Lumos cannot meet this burden.
L. Response to Counterclaim Count X: Declaratory Judgment of Invalidity of the '890 Patent Under 35 U.S.C. § 103
43. OWS denies that any asserted claim of the '890 Patent, including Claims 1, 5, 8, and 13, is invalid as obvious under 35 U.S.C. § 103, whether based on a single prior art reference or any combination of prior art references.
44. OWS specifically denies that the publication by Iyer & Patel, "Co-Design of Modulator Drivers and Silicon Photonic Mach-Zehnder Structures," IEEE Transactions on Circuits and Systems, Vol. 65, No. 8, pp. 2701–2713 (2018) (hereinafter "Iyer & Patel"), alone or in combination with any other prior art, renders any asserted claim of the '890 Patent obvious. Iyer & Patel describes the co-design of modulator drivers and silicon photonic Mach-Zehnder structures as separately fabricated components that are subsequently bonded or assembled together, and does not teach or suggest the "co-integrated" limitation recited in the asserted claims of the '890 Patent.
45. OWS notes that during prosecution of the '890 Patent, the claims underwent two office actions. In response, the applicant amended the claims to include the "co-integrated" limitation, which requires that the driver circuit and the silicon photonic Mach-Zehnder modulator be co-integrated on a common substrate through a unified fabrication process, as distinguished from approaches where the driver circuit and modulator are separately fabricated and thereafter bonded, flip-chipped, or otherwise assembled. The Examiner considered this amendment and allowed the claims as issued, confirming that the claims are patentably distinct from the prior art of record.
46. OWS affirmatively states that the '890 Patent is entitled to the statutory presumption of validity under 35 U.S.C. § 282, and that Lumos bears the burden of proving obviousness by clear and convincing evidence. Lumos cannot satisfy this burden.
M. Response to Counterclaim Count XI: Declaratory Judgment of Invalidity Under 35 U.S.C. § 112
47. OWS denies that any asserted claim of any of the four patents-in-suit — the '567 Patent, the '234 Patent, the '678 Patent, and the '890 Patent — is invalid under 35 U.S.C. § 112 for failure to comply with the written description requirement of § 112(a), the enablement requirement of § 112(a), or the definiteness requirement of § 112(b).
48. OWS affirmatively states that the specifications of each of the patents-in-suit provide a written description of the claimed inventions that is sufficient to demonstrate to a person of ordinary skill in the art that the inventors were in possession of the claimed inventions at the time of filing. The specifications disclose detailed embodiments, structural descriptions, fabrication processes, performance data, and figures that fully support the asserted claims.
49. OWS further states that the specifications of each of the patents-in-suit enable a person of ordinary skill in the art to make and use the claimed inventions without undue experimentation. The specifications include sufficient detail regarding materials, dimensions, fabrication techniques, process parameters, and operational principles to allow practice of the claimed inventions.
50. OWS further states that the claims of each of the patents-in-suit are sufficiently definite to inform those skilled in the art about the scope of the respective inventions with reasonable certainty, as required by Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014). The claim terms used in the asserted claims, including but not limited to "adiabatically coupled," "graded buffer layer," "monolithically formed," and "co-integrated," are terms that have well-understood meanings to those skilled in the relevant art of silicon photonics and integrated circuit design.
51. OWS affirmatively asserts the presumption of validity of each of the patents-in-suit under 35 U.S.C. § 282. Lumos bears the burden of proving invalidity under § 112 by clear and convincing evidence, which it cannot meet.
N. Response to Prayer for Relief in the Counterclaims
52. OWS denies that Lumos is entitled to any of the relief requested in its Counterclaims, including but not limited to declaratory judgments of non-infringement of any claim of any of the patents-in-suit, declaratory judgments of invalidity of any claim of any of the patents-in-suit, an award of costs and attorneys' fees, or any other or further relief.
53. OWS denies that Lumos is entitled to an award of its costs and attorneys' fees under 35 U.S.C. § 285 or any other provision of law. This case is not an "exceptional case" within the meaning of § 285, and Lumos has presented no basis for such an award.
54. OWS denies that Lumos is entitled to any other or further relief beyond that specifically requested in the Counterclaims, or to any relief at all.
III. AFFIRMATIVE DEFENSES TO COUNTERCLAIMS
Without assuming the burden of proof on any issue for which Lumos bears the burden, and without waiving any objections, including objections as to relevance, materiality, or admissibility, OWS asserts the following affirmative defenses to the Counterclaims:
FIRST AFFIRMATIVE DEFENSE: Failure to State a Claim
Lumos's Counterclaims, in whole or in part, fail to state a claim upon which relief can be granted under Federal Rule of Civil Procedure 12(b)(6). To the extent that any of Lumos's Counterclaims rest upon conclusory allegations, unsupported legal theories, or insufficient factual predicates, they should be dismissed. OWS reserves the right to bring a motion under Rule 12(b)(6) at the appropriate time.
SECOND AFFIRMATIVE DEFENSE: Presumption of Validity
Each of the patents-in-suit — United States Patent Nos. 10,234,567; 10,891,234; 11,045,678; and 11,312,890 — was duly and regularly issued by the United States Patent and Trademark Office after examination and is presumed valid under 35 U.S.C. § 282. This statutory presumption of validity applies to each claim of each patent and can only be overcome by clear and convincing evidence. See Kestrel Partners LLC v. i4i Ltd. Partnership, 564 U.S. 91 (2011). Lumos bears the burden of proving invalidity by clear and convincing evidence as to each claim of each patent it challenges, and it cannot meet that burden.
THIRD AFFIRMATIVE DEFENSE: Infringement
Lumos's LumosBridge™ 800G Optical Engine and LumosEdge™ 400ZR+ Pluggable Transceiver products infringe one or more asserted claims of each of the four patents-in-suit, either literally or under the doctrine of equivalents, or both. OWS's Complaint sets forth detailed allegations of infringement, and the factual record, as developed through investigation and as to be further developed through discovery, supports OWS's infringement contentions. Lumos's Counterclaims seeking declaratory judgments of non-infringement are therefore without merit and should be denied.
FOURTH AFFIRMATIVE DEFENSE: Prosecution History Supports Validity
The prosecution histories of the patents-in-suit, including all amendments, remarks, declarations, and examiner correspondence made during prosecution before the United States Patent and Trademark Office, confirm that the claims as issued are valid over the prior art considered by the Examiner, including the very prior art now cited by Lumos in its Counterclaims. Specifically:
(a) The '567 Patent. The '567 Patent underwent two office action rejections during prosecution, in which the Examiner cited, among other references, U.S. Patent No. 9,456,012 to Tanaka et al. In response, the applicant narrowed the claims to include the "adiabatically coupled" limitation to overcome the Tanaka reference and distinguish the claimed invention from the coupling approach disclosed therein. The Examiner considered the amendment and the applicant's accompanying remarks and allowed the claims as issued. The claims of the '567 Patent remain valid and patentably distinct from Tanaka and from all other prior art of record.
(b) The '234 Patent. The '234 Patent was allowed on first office action following an examiner interview conducted on October 22, 2020, at which the applicant discussed the scope and novelty of the claimed germanium-on-silicon photodetector with graded buffer layer. The Examiner considered the prior art of record and allowed the claims without rejection.
(c) The '678 Patent. The '678 Patent underwent three office actions during prosecution, in which the Examiner cited various prior art references directed to hybrid integration approaches for multi-channel optical transceivers. In response, the applicant amended the claims to include the "monolithically formed" limitation, specifying that the claimed wavelength-division multiplexing components and transceiver elements are monolithically formed on a single silicon substrate. This amendment was expressly made to distinguish the claimed invention from prior art based on hybrid integration — i.e., the separate fabrication and subsequent assembly of discrete optical and electronic components. The Examiner considered this amendment and the applicant's remarks and allowed the claims as issued.
(d) The '890 Patent. The '890 Patent underwent two office actions during prosecution. In response, the applicant amended the claims to add the "co-integrated" limitation, requiring that the driver circuit and the silicon photonic Mach-Zehnder modulator be co-integrated on a common substrate through a unified fabrication process. This limitation distinguishes the claimed invention from prior art approaches in which driver circuits and modulators are separately fabricated and then bonded, flip-chipped, or otherwise assembled together. The Examiner considered this amendment and allowed the claims as issued.
The foregoing prosecution histories confirm that the claims of each patent-in-suit were carefully considered by the United States Patent and Trademark Office and that the claims as issued are valid and patentably distinct from the prior art of record.
FIFTH AFFIRMATIVE DEFENSE: Waiver, Estoppel, and Laches (Reserved)
To the extent applicable, Lumos's Counterclaims may be barred, in whole or in part, by the doctrines of waiver, estoppel, and/or laches. Discovery has not yet been completed in this action, and OWS reserves the right to assert these defenses more fully as additional facts become known.
SIXTH AFFIRMATIVE DEFENSE: Reservation of Defenses
OWS reserves the right to assert additional affirmative defenses as may become apparent through the course of discovery, further investigation, claim construction proceedings, and other developments in this action. OWS does not intend, by the assertion of the foregoing defenses, to assume the burden of proof on any issue for which Lumos bears the burden of proof under applicable law.
IV. PRAYER FOR RELIEF
WHEREFORE, Plaintiff and Counterclaim Defendant Optiwave Semiconductor Corp. respectfully requests that the Court enter judgment as follows:
1. That all relief sought by Lumos in its Counterclaims be denied in its entirety;
2. That each and every one of Lumos's Counterclaims be dismissed with prejudice;
3. That judgment be entered in favor of OWS and against Lumos on all of Lumos's Counterclaims;
4. That OWS be awarded its costs of suit incurred in defending against the Counterclaims, including reasonable attorneys' fees to the extent permitted by law; and
5. That OWS be granted such other and further relief as the Court deems just and proper.
V. JURY DEMAND
Pursuant to Federal Rule of Civil Procedure 38 and the Seventh Amendment to the United States Constitution, Plaintiff and Counterclaim Defendant Optiwave Semiconductor Corp. hereby demands a trial by jury on all issues so triable in connection with Lumos's Counterclaims, including but not limited to all issues relating to infringement, validity, enforceability, and damages.
Respectfully submitted,
Dated: August 26, 2022
CALDERWOOD & HARKNESS LLP
By: ________
Alan Ngo (Cal. Bar No. 287415; USPTO Reg. No. 52,871) One Embarcadero Center, 34th Floor San Francisco, California 94111 Telephone: (415) 773-5500 Facsimile: (415) 773-5501
Email: ango@calderwoodharkness.com
Omar Siddiqui (Cal. Bar No. 304228)
Email: osiddiqui@calderwoodharkness.com
Christy Bauer (Cal. Bar No. 311674)
Email: cbauer@calderwoodharkness.com
Attorneys for Plaintiff and Counterclaim Defendant Optiwave Semiconductor Corp.
CERTIFICATE OF SERVICE
I hereby certify that on August 26, 2022, a true and correct copy of the foregoing PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S ANSWER TO DEFENDANT LUMOS PHOTONICS, INC.'S COUNTERCLAIMS was served on all counsel of record via the Court's CM/ECF electronic filing system, which will send a Notice of Electronic Filing to the following:
Victoria "Tori" Ashworth Brannick Howell & Stein LLP 555 California Street, Suite 2800 San Francisco, California 94104 Telephone: (415) 986-4000
Email: tashworth@bhslaw.com
Daniel Kowalski Brannick Howell & Stein LLP 555 California Street, Suite 2800 San Francisco, California 94104 Telephone: (415) 986-4000
Email: dkowalski@bhslaw.com
Counsel of Record for Defendant and Counterclaim Plaintiff Lumos Photonics, Inc.
By: ________
Alan Ngo
OPTIWAVE SEMICONDUCTOR CORP., a Delaware corporation, | Case No. 5:22-cv-03417-EJD
Plaintiff and Counterclaim Defendant, | Hon. Edward J. Torvelis
v. | PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S ANSWER TO DEFENDANT LUMOS PHOTONICS, INC.'S COUNTERCLAIMS
LUMOS PHOTONICS, INC., a Delaware corporation,
Defendant and Counterclaim Plaintiff.

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

I. INTRODUCTION

II. ANSWER TO SPECIFIC ALLEGATIONS OF THE COUNTERCLAIMS

III. AFFIRMATIVE DEFENSES TO COUNTERCLAIMS

IV. PRAYER FOR RELIEF

V. JURY DEMAND

CALDERWOOD & HARKNESS LLP

CERTIFICATE OF SERVICE

Record

Parties

Dates

Amounts