1014-00003 · Optiwave Semiconductor Corp · Pleadings

civil-cover-sheet-js44.docx DOCUMENT Litigation

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JS 44 (Rev. 04/21)

CIVIL COVER SHEET

The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)

Filed: June 3, 2022 Court: United States District Court for the Northern District of California Division: San Jose Division Filed Concurrently With: Complaint for Patent Infringement

I. (a) PLAINTIFFS AND DEFENDANTS

NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE TRACT OF LAND INVOLVED.

Defendant Lumos Photonics, Inc. also maintains a regular and established place of business in this district at 4750 Great America Parkway, Suite 320, Santa Clara, CA 95054, which serves as a sales office and engineering center with permanent employees.

I. (b) ATTORNEYS (Firm Name, Address, and Telephone Number)

Attorneys for Plaintiff:

Calderwood & Harkness LLP One Embarcadero Center, 34th Floor San Francisco, CA 94111 Telephone: (415) 772-3000 Facsimile: (415) 772-3001

Attorney of Record: Alan Ngo (Cal. Bar No. 247819; USPTO Reg. No. 52,871)

Email: ango@calderwoodharkness.com

Additional Counsel: Marcus Delgado (Cal. Bar No. 261044) Omar Siddiqui (Cal. Bar No. 284376) Christy Bauer (Cal. Bar No. 302518)

Attorneys for Defendant (if known):

(Left blank at time of filing.)

Subsequently identified as: Brannick Howell & Stein LLP, 555 California Street, Suite 2800, San Francisco, CA 94104; Victoria "Tori" Ashworth, lead partner.

II. BASIS OF JURISDICTION

(Place an "X" in One Box Only)

Jurisdictional Statutes: 28 U.S.C. §§ 1331, 1338(a). This Court has original and exclusive jurisdiction over this action because it arises under the patent laws of the United States, specifically 35 U.S.C. § 271. Subject matter jurisdiction is proper pursuant to 28 U.S.C. § 1338(a), which provides that "[t]he district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents."

III. CITIZENSHIP OF PRINCIPAL PARTIES

(For Diversity Cases Only — Place an "X" in One box for Plaintiff and One box for Defendant)

This action is brought pursuant to federal question jurisdiction under 28 U.S.C. §§ 1331 and 1338(a) and does not rely upon diversity of citizenship as a basis for jurisdiction. Accordingly, this section is not applicable.

However, for completeness and for the information of the Clerk of Court, the citizenship of the principal parties is as follows:

• Plaintiff (Optiwave Semiconductor Corp.): Incorporated in the State of Delaware (PTF box 2: State indicated — Delaware); principal place of business in the State of California (PTF box 5: State indicated — California).

• Defendant (Lumos Photonics, Inc.): Incorporated in the State of Delaware (DEF box 2: State indicated — Delaware); principal place of business in the State of Texas (DEF box 5: State indicated — Texas).

Complete diversity exists between the parties. Both parties are incorporated in Delaware, but maintain different principal places of business — Plaintiff in California and Defendant in Texas. Notwithstanding the existence of diversity, the basis of jurisdiction for this action is federal question jurisdiction under 28 U.S.C. § 1338(a).

IV. NATURE OF SUIT

(Place an "X" in One Box Only)

Category: Intellectual Property / Property Rights

box 830 — Patent is checked. This action involves claims of patent infringement under 35 U.S.C. § 271 with respect to four United States patents owned by Plaintiff Optiwave Semiconductor Corp.

V. ORIGIN

(Place an "X" in One Box Only)

This case is an original proceeding filed directly in the United States District Court for the Northern District of California, San Jose Division.

VI. CAUSE OF ACTION

Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):

35 U.S.C. § 271 (Patent Infringement)

Brief description of cause:

Patent infringement action asserting four United States patents — U.S. Patent Nos. 10,234,567; 10,891,234; 11,045,678; and 11,312,890 — covering integrated waveguide coupling with tapered mode converter technology, germanium-on-silicon photodetector architectures employing graded buffer layers, multi-channel optical transceiver wavelength-division multiplexing integrated on silicon, and driver circuit architectures for high-speed silicon photonic Mach-Zehnder modulators. The Complaint alleges infringement by Defendant Lumos Photonics, Inc. through the manufacture, use, sale, offer for sale, and/or importation into the United States of Defendant's LumosBridge™ 800G Optical Engine and LumosEdge™ 400ZR+ Pluggable Transceiver products. Plaintiff alleges direct infringement, induced infringement, and contributory infringement under 35 U.S.C. § 271(a), (b), and (c), and further alleges that Defendant's infringement has been willful and deliberate.

VII. REQUESTED IN COMPLAINT

CHECK IF THIS IS A CLASS ACTION UNDER RULE 23, F.R.Civ.P.

Class action status is not requested. This is not a class action.

DEMAND $:

Exceeds $75,000,000. Plaintiff seeks damages in an amount to be proven at trial, but believed to exceed seventy-five million dollars ($75,000,000), based on a reasonable royalty theory. Plaintiff's preliminary damages estimate is calculated by applying an estimated royalty rate of approximately 7.5% to accused product revenue, which Plaintiff estimates at approximately $148.6 million for calendar year 2022, with substantial additional revenue anticipated during the pendency of this litigation. Plaintiff also seeks enhanced damages of up to three times the amount of compensatory damages found or assessed for willful infringement pursuant to 35 U.S.C. § 284, as well as permanent injunctive relief under 35 U.S.C. § 283, attorneys' fees and costs under 35 U.S.C. § 285 if this case is found to be exceptional, pre-judgment and post-judgment interest, and such other and further relief as this Court deems just and proper.

CHECK YES ONLY IF DEMANDED IN COMPLAINT:

JURY DEMAND: Yes

Plaintiff demands a trial by jury on all issues so triable pursuant to Rule 38 of the Federal Rules of Civil Procedure.

VIII. RELATED CASE(S) IF ANY

(See instructions)

There are no related cases currently pending in this Court or in any other court known to Plaintiff's counsel at the time of filing. Plaintiff's counsel has conducted a reasonable inquiry and is not aware of any previously filed action involving the same patents-in-suit or the same accused products.

Note: This case was subsequently assigned to the Honorable Edward J. Torvelis, United States District Judge, and assigned Case No. 5:22-cv-03417-EJD.

SIGNATURE OF ATTORNEY OF RECORD

Date: June 3, 2022

Signature of Attorney of Record:

By: ________

Alan Ngo (Cal. Bar No. 247819; USPTO Reg. No. 52,871) CALDERWOOD & HARKNESS LLP One Embarcadero Center, 34th Floor San Francisco, CA 94111 Telephone: (415) 772-3000 Facsimile: (415) 772-3001

Email: ango@calderwoodharkness.com

Attorney for Plaintiff Optiwave Semiconductor Corp.

SUPPLEMENTAL INFORMATION

Northern District of California Local Form — Additional Fields

Required pursuant to Civil Local Rule 3-2 of the Northern District of California. This supplemental sheet must be filed concurrently with the JS 44 Civil Cover Sheet and the initiating pleading.

1. Parties Information

Plaintiff:

Optiwave Semiconductor Corp. is a Delaware corporation with its principal place of business at 2775 Augustine Drive, Suite 400, San Jose, California 95054. Plaintiff's Employer Identification Number (EIN) is 47-3918264. Optiwave is a fabless semiconductor design company specializing in the design and development of silicon photonics integrated circuits for data center interconnect, telecommunications, and high-performance computing applications. Optiwave does not operate its own fabrication facilities but contracts with third-party foundries for the manufacture of its products. Optiwave is majority-owned, holding approximately sixty-two percent (62%) equity interest, by Vantage Point Capital Partners Fund IV, LP, a Delaware limited partnership. Optiwave is the sole owner by assignment of all right, title, and interest in and to each of the four patents-in-suit, and has standing to bring this action for infringement of those patents.

Defendant:

Lumos Photonics, Inc. is a Delaware corporation with its principal place of business at 9400 McNeil Drive, Building 7, Austin, Texas 78758. Lumos Photonics is publicly traded on the Nasdaq Stock Market under the ticker symbol "LMPH." Lumos Photonics is an integrated device manufacturer of silicon photonics components and modules, including optical transceivers, optical engines, and related semiconductor devices for data communications and telecommunications markets. Defendant operates a semiconductor fabrication facility in Hillsboro, Oregon, where certain of the accused products are manufactured. Defendant also maintains a sales office and engineering center in Santa Clara, California, at 4750 Great America Parkway, Suite 320, Santa Clara, CA 95054, with permanent employees engaged in sales, applications engineering, and product support activities within this judicial district.

2. Venue Basis

Statute: 28 U.S.C. § 1400(b)

Facts Supporting Venue in the Northern District of California:

Venue is proper in this judicial district under 28 U.S.C. § 1400(b), which provides that "[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business." Plaintiff relies on the second prong of § 1400(b) and alleges the following facts in support of venue:

(a) Regular and Established Place of Business. Defendant Lumos Photonics, Inc. maintains a regular and established place of business in the Northern District of California at 4750 Great America Parkway, Suite 320, Santa Clara, California 95054. This facility serves as a sales office and engineering center staffed with permanent, full-time employees of Defendant. The Santa Clara office has been in continuous operation since at least 2019. Defendant's employees at this location engage in sales, customer support, applications engineering, and technical product demonstrations for customers located within this judicial district. Defendant's website and publicly available marketing materials identify the Santa Clara, California location as a Lumos Photonics office. The office is listed on Defendant's corporate website under "Locations" and appears on business cards and email signatures of Defendant's employees stationed at that facility.

(b) Acts of Infringement Within the District. Defendant has committed acts of infringement within the Northern District of California, including the sale, offer for sale, and/or use of accused products — specifically the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver — to customers located within this district. On information and belief, Defendant has made direct sales of accused products to hyperscale data center operators and cloud computing companies headquartered in the Northern District of California, including customers with principal offices in Santa Clara County, San Mateo County, and Alameda County. Approximately twenty-two percent (22%) of Defendant's United States revenue from accused products is generated from customers located in the Northern District of California.

(c) Registered Agent in California. Defendant's registered agent for service of process in the State of California is Ashgrove Services Inc., located at 818 West 7th Street, Suite 930, Los Angeles, California 90017.

3. Nature of Proceeding

This is an original civil action for patent infringement under 35 U.S.C. § 271. Plaintiff Optiwave Semiconductor Corp. seeks the following relief against Defendant Lumos Photonics, Inc.:

(1) A judgment that Defendant has directly infringed, induced the infringement of, and/or contributorily infringed each of the four patents-in-suit, namely U.S. Patent Nos. 10,234,567; 10,891,234; 11,045,678; and 11,312,890;

(2) An award of compensatory damages adequate to compensate Plaintiff for Defendant's infringement, in an amount no less than a reasonable royalty pursuant to 35 U.S.C. § 284, together with interest and costs as fixed by the Court;

(3) A finding that Defendant's infringement of each of the patents-in-suit has been willful and deliberate, and an award of enhanced damages up to three times the amount of compensatory damages found or assessed, pursuant to 35 U.S.C. § 284;

(4) A permanent injunction restraining and enjoining Defendant, its officers, agents, servants, employees, attorneys, and all persons in active concert or participation with any of them, from further infringement of the patents-in-suit, pursuant to 35 U.S.C. § 283;

(5) A finding that this case is exceptional and an award of Plaintiff's reasonable attorneys' fees and costs incurred in this action, pursuant to 35 U.S.C. § 285;

(6) An award of pre-judgment interest from the date of first infringement through the date of judgment, and post-judgment interest from the date of judgment through the date of payment, at the maximum rates allowed by law; and

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

4. Identification of Patents-in-Suit

The following four United States patents are asserted in this action. Each patent is owned by Plaintiff Optiwave Semiconductor Corp. and is currently in force:

All four patents-in-suit were duly and legally issued by the United States Patent and Trademark Office after full and fair examination. Certified copies of each patent will be attached as exhibits to the Complaint filed concurrently herewith.

5. Accused Products

The following products manufactured, sold, offered for sale, used, and/or imported by Defendant Lumos Photonics, Inc. are accused of infringing one or more claims of the patents-in-suit:

(a) LumosBridge™ 800G Optical Engine. This product is a co-packaged silicon photonics optical engine designed for 800 Gigabit Ethernet (800GbE) data center interconnect applications. The LumosBridge™ 800G Optical Engine was first shipped commercially in the first quarter of 2022 (Q1 2022). The unit price for this product ranges from approximately $1,200 to $1,800, depending on configuration, volume, and customer-specific pricing terms.

(b) LumosEdge™ 400ZR+ Pluggable Transceiver. This product is a QSFP-DD form-factor pluggable coherent optical transceiver designed for 400 Gigabit Ethernet (400GbE) data center interconnect and metro/edge applications, compliant with the OIF 400ZR+ Implementation Agreement. The LumosEdge™ 400ZR+ Pluggable Transceiver has been in commercial production since the third quarter of 2021 (Q3 2021). The unit price for this product ranges from approximately $600 to $900, depending on configuration, volume, and customer-specific pricing terms.

The combined revenue attributable to the accused products for calendar year 2022 is estimated at approximately $148.6 million, based on publicly available financial data, Defendant's SEC filings, and industry analyst reports.

6. Assignment Request / Divisional Information

Division: San Jose Division, Northern District of California

Request for Assignment: Plaintiff respectfully requests that this case be assigned to the San Jose Division of the Northern District of California. Plaintiff's principal place of business is located in San Jose, Santa Clara County, California, and Defendant's Northern District office is located in Santa Clara, Santa Clara County, California. The events giving rise to the claims asserted in this action, including Defendant's sales and offers for sale of accused products to customers in this district, have a substantial connection to Santa Clara County. Assignment to the San Jose Division is appropriate under Civil Local Rule 3-2(c)-(d) of the Northern District of California.

End of Civil Cover Sheet and Supplemental Information

Respectfully submitted,

CALDERWOOD & HARKNESS LLP

By: ________

Alan Ngo (Cal. Bar No. 247819; USPTO Reg. No. 52,871) One Embarcadero Center, 34th Floor San Francisco, CA 94111 Telephone: (415) 772-3000 Facsimile: (415) 772-3001

Email: ango@calderwoodharkness.com

Attorneys for Plaintiff Optiwave Semiconductor Corp.

Date: June 3, 2022

PLAINTIFFS	DEFENDANTS
Name	Optiwave Semiconductor Corp.	Lumos Photonics, Inc.
County of Residence of First Listed Plaintiff	Santa Clara County, California	Travis County, Texas (HQ); also maintains an office in Santa Clara County, California
State of Incorporation	Delaware	Delaware
Principal Place of Business	California (San Jose)	Texas (Austin)
Address	2775 Augustine Drive, Suite 400, San Jose, CA 95054	9400 McNeil Drive, Building 7, Austin, TX 78758
1. U.S. Government Plaintiff	2. U.S. Government Defendant
3. Federal Question (U.S. Government Not a Party)	4. Diversity (Indicate Citizenship of Principal Parties in Item III)
PTF	DEF
Citizen of This State	1	1
Incorporated or Principal Place of Business in This State	2	2
Incorporated and Principal Place of Business in Another State	3	3
Foreign Nation	4	4
Code	Nature of Suit	Selected
820	Copyrights
830	Patent	**
835	Patent — Abbreviated New Drug Application
840	Trademark
880	Defend Trade Secrets Act of 2016
Box	Origin	Selected
1	Original Proceeding	**
2	Removed from State Court
3	Remanded from Appellate Court
4	Reinstated or Reopened
5	Transferred from Another District (specify)

6	Multidistrict Litigation — Transfer
8	Multidistrict Litigation — Direct File
Field	Entry
Judge	None identified at time of filing
Docket Number	None — no related cases pending
Patent No.	Title (Abbreviated)	Issue Date	Earliest Effective Filing Date
U.S. 10,234,567	Integrated Waveguide Coupler with Tapered Mode Converter	March 19, 2019	September 12, 2016
U.S. 10,891,234	Germanium-on-Silicon Photodetector with Graded Buffer Layer	January 14, 2021	April 3, 2018
U.S. 11,045,678	Multi-Channel Optical Transceiver with Integrated WDM on Silicon	June 29, 2021	November 22, 2019
U.S. 11,312,890	Driver Circuit Architecture for High-Speed Silicon Photonic MZM	April 26, 2022	February 8, 2021

JS 44 (Rev. 04/21)
CIVIL COVER SHEET
The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
Filed: June 3, 2022 Court: United States District Court for the Northern District of California Division: San Jose Division Filed Concurrently With: Complaint for Patent Infringement
I. (a) PLAINTIFFS AND DEFENDANTS
NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE TRACT OF LAND INVOLVED.
Defendant Lumos Photonics, Inc. also maintains a regular and established place of business in this district at 4750 Great America Parkway, Suite 320, Santa Clara, CA 95054, which serves as a sales office and engineering center with permanent employees.
I. (b) ATTORNEYS (Firm Name, Address, and Telephone Number)
Attorneys for Plaintiff:
Calderwood & Harkness LLP One Embarcadero Center, 34th Floor San Francisco, CA 94111 Telephone: (415) 772-3000 Facsimile: (415) 772-3001
Attorney of Record: Alan Ngo (Cal. Bar No. 247819; USPTO Reg. No. 52,871)
Email: ango@calderwoodharkness.com
Additional Counsel: Marcus Delgado (Cal. Bar No. 261044) Omar Siddiqui (Cal. Bar No. 284376) Christy Bauer (Cal. Bar No. 302518)
Attorneys for Defendant (if known):
(Left blank at time of filing.)
Subsequently identified as: Brannick Howell & Stein LLP, 555 California Street, Suite 2800, San Francisco, CA 94104; Victoria "Tori" Ashworth, lead partner.
II. BASIS OF JURISDICTION
(Place an "X" in One Box Only)
Jurisdictional Statutes: 28 U.S.C. §§ 1331, 1338(a). This Court has original and exclusive jurisdiction over this action because it arises under the patent laws of the United States, specifically 35 U.S.C. § 271. Subject matter jurisdiction is proper pursuant to 28 U.S.C. § 1338(a), which provides that "[t]he district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents."
III. CITIZENSHIP OF PRINCIPAL PARTIES
(For Diversity Cases Only — Place an "X" in One box for Plaintiff and One box for Defendant)
This action is brought pursuant to federal question jurisdiction under 28 U.S.C. §§ 1331 and 1338(a) and does not rely upon diversity of citizenship as a basis for jurisdiction. Accordingly, this section is not applicable.
However, for completeness and for the information of the Clerk of Court, the citizenship of the principal parties is as follows:
•  Plaintiff (Optiwave Semiconductor Corp.): Incorporated in the State of Delaware (PTF box 2: State indicated — Delaware); principal place of business in the State of California (PTF box 5: State indicated — California).
•  Defendant (Lumos Photonics, Inc.): Incorporated in the State of Delaware (DEF box 2: State indicated — Delaware); principal place of business in the State of Texas (DEF box 5: State indicated — Texas).
Complete diversity exists between the parties. Both parties are incorporated in Delaware, but maintain different principal places of business — Plaintiff in California and Defendant in Texas. Notwithstanding the existence of diversity, the basis of jurisdiction for this action is federal question jurisdiction under 28 U.S.C. § 1338(a).
IV. NATURE OF SUIT
(Place an "X" in One Box Only)
Category: Intellectual Property / Property Rights
box 830 — Patent is checked. This action involves claims of patent infringement under 35 U.S.C. § 271 with respect to four United States patents owned by Plaintiff Optiwave Semiconductor Corp.
V. ORIGIN
(Place an "X" in One Box Only)
This case is an original proceeding filed directly in the United States District Court for the Northern District of California, San Jose Division.
VI. CAUSE OF ACTION
Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
35 U.S.C. § 271 (Patent Infringement)
Brief description of cause:
Patent infringement action asserting four United States patents — U.S. Patent Nos. 10,234,567; 10,891,234; 11,045,678; and 11,312,890 — covering integrated waveguide coupling with tapered mode converter technology, germanium-on-silicon photodetector architectures employing graded buffer layers, multi-channel optical transceiver wavelength-division multiplexing integrated on silicon, and driver circuit architectures for high-speed silicon photonic Mach-Zehnder modulators. The Complaint alleges infringement by Defendant Lumos Photonics, Inc. through the manufacture, use, sale, offer for sale, and/or importation into the United States of Defendant's LumosBridge™ 800G Optical Engine and LumosEdge™ 400ZR+ Pluggable Transceiver products. Plaintiff alleges direct infringement, induced infringement, and contributory infringement under 35 U.S.C. § 271(a), (b), and (c), and further alleges that Defendant's infringement has been willful and deliberate.
VII. REQUESTED IN COMPLAINT
 CHECK IF THIS IS A CLASS ACTION UNDER RULE 23, F.R.Civ.P.
Class action status is not requested. This is not a class action.
DEMAND $:
Exceeds $75,000,000. Plaintiff seeks damages in an amount to be proven at trial, but believed to exceed seventy-five million dollars ($75,000,000), based on a reasonable royalty theory. Plaintiff's preliminary damages estimate is calculated by applying an estimated royalty rate of approximately 7.5% to accused product revenue, which Plaintiff estimates at approximately $148.6 million for calendar year 2022, with substantial additional revenue anticipated during the pendency of this litigation. Plaintiff also seeks enhanced damages of up to three times the amount of compensatory damages found or assessed for willful infringement pursuant to 35 U.S.C. § 284, as well as permanent injunctive relief under 35 U.S.C. § 283, attorneys' fees and costs under 35 U.S.C. § 285 if this case is found to be exceptional, pre-judgment and post-judgment interest, and such other and further relief as this Court deems just and proper.
CHECK YES ONLY IF DEMANDED IN COMPLAINT:
JURY DEMAND:  Yes
Plaintiff demands a trial by jury on all issues so triable pursuant to Rule 38 of the Federal Rules of Civil Procedure.
VIII. RELATED CASE(S) IF ANY
(See instructions)
There are no related cases currently pending in this Court or in any other court known to Plaintiff's counsel at the time of filing. Plaintiff's counsel has conducted a reasonable inquiry and is not aware of any previously filed action involving the same patents-in-suit or the same accused products.
Note: This case was subsequently assigned to the Honorable Edward J. Torvelis, United States District Judge, and assigned Case No. 5:22-cv-03417-EJD.
SIGNATURE OF ATTORNEY OF RECORD
Date: June 3, 2022
Signature of Attorney of Record:
By: ________
Alan Ngo (Cal. Bar No. 247819; USPTO Reg. No. 52,871) CALDERWOOD & HARKNESS LLP One Embarcadero Center, 34th Floor San Francisco, CA 94111 Telephone: (415) 772-3000 Facsimile: (415) 772-3001
Email: ango@calderwoodharkness.com
Attorney for Plaintiff Optiwave Semiconductor Corp.
SUPPLEMENTAL INFORMATION
Northern District of California Local Form — Additional Fields
Required pursuant to Civil Local Rule 3-2 of the Northern District of California. This supplemental sheet must be filed concurrently with the JS 44 Civil Cover Sheet and the initiating pleading.
1. Parties Information
Plaintiff:
Optiwave Semiconductor Corp. is a Delaware corporation with its principal place of business at 2775 Augustine Drive, Suite 400, San Jose, California 95054. Plaintiff's Employer Identification Number (EIN) is 47-3918264. Optiwave is a fabless semiconductor design company specializing in the design and development of silicon photonics integrated circuits for data center interconnect, telecommunications, and high-performance computing applications. Optiwave does not operate its own fabrication facilities but contracts with third-party foundries for the manufacture of its products. Optiwave is majority-owned, holding approximately sixty-two percent (62%) equity interest, by Vantage Point Capital Partners Fund IV, LP, a Delaware limited partnership. Optiwave is the sole owner by assignment of all right, title, and interest in and to each of the four patents-in-suit, and has standing to bring this action for infringement of those patents.
Defendant:
Lumos Photonics, Inc. is a Delaware corporation with its principal place of business at 9400 McNeil Drive, Building 7, Austin, Texas 78758. Lumos Photonics is publicly traded on the Nasdaq Stock Market under the ticker symbol "LMPH." Lumos Photonics is an integrated device manufacturer of silicon photonics components and modules, including optical transceivers, optical engines, and related semiconductor devices for data communications and telecommunications markets. Defendant operates a semiconductor fabrication facility in Hillsboro, Oregon, where certain of the accused products are manufactured. Defendant also maintains a sales office and engineering center in Santa Clara, California, at 4750 Great America Parkway, Suite 320, Santa Clara, CA 95054, with permanent employees engaged in sales, applications engineering, and product support activities within this judicial district.
2. Venue Basis
Statute: 28 U.S.C. § 1400(b)
Facts Supporting Venue in the Northern District of California:
Venue is proper in this judicial district under 28 U.S.C. § 1400(b), which provides that "[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business." Plaintiff relies on the second prong of § 1400(b) and alleges the following facts in support of venue:
(a) Regular and Established Place of Business. Defendant Lumos Photonics, Inc. maintains a regular and established place of business in the Northern District of California at 4750 Great America Parkway, Suite 320, Santa Clara, California 95054. This facility serves as a sales office and engineering center staffed with permanent, full-time employees of Defendant. The Santa Clara office has been in continuous operation since at least 2019. Defendant's employees at this location engage in sales, customer support, applications engineering, and technical product demonstrations for customers located within this judicial district. Defendant's website and publicly available marketing materials identify the Santa Clara, California location as a Lumos Photonics office. The office is listed on Defendant's corporate website under "Locations" and appears on business cards and email signatures of Defendant's employees stationed at that facility.
(b) Acts of Infringement Within the District. Defendant has committed acts of infringement within the Northern District of California, including the sale, offer for sale, and/or use of accused products — specifically the LumosBridge™ 800G Optical Engine and the LumosEdge™ 400ZR+ Pluggable Transceiver — to customers located within this district. On information and belief, Defendant has made direct sales of accused products to hyperscale data center operators and cloud computing companies headquartered in the Northern District of California, including customers with principal offices in Santa Clara County, San Mateo County, and Alameda County. Approximately twenty-two percent (22%) of Defendant's United States revenue from accused products is generated from customers located in the Northern District of California.
(c) Registered Agent in California. Defendant's registered agent for service of process in the State of California is Ashgrove Services Inc., located at 818 West 7th Street, Suite 930, Los Angeles, California 90017.
3. Nature of Proceeding
This is an original civil action for patent infringement under 35 U.S.C. § 271. Plaintiff Optiwave Semiconductor Corp. seeks the following relief against Defendant Lumos Photonics, Inc.:
(1) A judgment that Defendant has directly infringed, induced the infringement of, and/or contributorily infringed each of the four patents-in-suit, namely U.S. Patent Nos. 10,234,567; 10,891,234; 11,045,678; and 11,312,890;
(2) An award of compensatory damages adequate to compensate Plaintiff for Defendant's infringement, in an amount no less than a reasonable royalty pursuant to 35 U.S.C. § 284, together with interest and costs as fixed by the Court;
(3) A finding that Defendant's infringement of each of the patents-in-suit has been willful and deliberate, and an award of enhanced damages up to three times the amount of compensatory damages found or assessed, pursuant to 35 U.S.C. § 284;
(4) A permanent injunction restraining and enjoining Defendant, its officers, agents, servants, employees, attorneys, and all persons in active concert or participation with any of them, from further infringement of the patents-in-suit, pursuant to 35 U.S.C. § 283;
(5) A finding that this case is exceptional and an award of Plaintiff's reasonable attorneys' fees and costs incurred in this action, pursuant to 35 U.S.C. § 285;
(6) An award of pre-judgment interest from the date of first infringement through the date of judgment, and post-judgment interest from the date of judgment through the date of payment, at the maximum rates allowed by law; and
(7) Such other and further relief as this Court deems just and proper.
4. Identification of Patents-in-Suit
The following four United States patents are asserted in this action. Each patent is owned by Plaintiff Optiwave Semiconductor Corp. and is currently in force:
All four patents-in-suit were duly and legally issued by the United States Patent and Trademark Office after full and fair examination. Certified copies of each patent will be attached as exhibits to the Complaint filed concurrently herewith.
5. Accused Products
The following products manufactured, sold, offered for sale, used, and/or imported by Defendant Lumos Photonics, Inc. are accused of infringing one or more claims of the patents-in-suit:
(a) LumosBridge™ 800G Optical Engine. This product is a co-packaged silicon photonics optical engine designed for 800 Gigabit Ethernet (800GbE) data center interconnect applications. The LumosBridge™ 800G Optical Engine was first shipped commercially in the first quarter of 2022 (Q1 2022). The unit price for this product ranges from approximately $1,200 to $1,800, depending on configuration, volume, and customer-specific pricing terms.
(b) LumosEdge™ 400ZR+ Pluggable Transceiver. This product is a QSFP-DD form-factor pluggable coherent optical transceiver designed for 400 Gigabit Ethernet (400GbE) data center interconnect and metro/edge applications, compliant with the OIF 400ZR+ Implementation Agreement. The LumosEdge™ 400ZR+ Pluggable Transceiver has been in commercial production since the third quarter of 2021 (Q3 2021). The unit price for this product ranges from approximately $600 to $900, depending on configuration, volume, and customer-specific pricing terms.
The combined revenue attributable to the accused products for calendar year 2022 is estimated at approximately $148.6 million, based on publicly available financial data, Defendant's SEC filings, and industry analyst reports.
6. Assignment Request / Divisional Information
Division: San Jose Division, Northern District of California
Request for Assignment: Plaintiff respectfully requests that this case be assigned to the San Jose Division of the Northern District of California. Plaintiff's principal place of business is located in San Jose, Santa Clara County, California, and Defendant's Northern District office is located in Santa Clara, Santa Clara County, California. The events giving rise to the claims asserted in this action, including Defendant's sales and offers for sale of accused products to customers in this district, have a substantial connection to Santa Clara County. Assignment to the San Jose Division is appropriate under Civil Local Rule 3-2(c)-(d) of the Northern District of California.
End of Civil Cover Sheet and Supplemental Information
Respectfully submitted,
CALDERWOOD & HARKNESS LLP
By: ________
Alan Ngo (Cal. Bar No. 247819; USPTO Reg. No. 52,871) One Embarcadero Center, 34th Floor San Francisco, CA 94111 Telephone: (415) 772-3000 Facsimile: (415) 772-3001
Email: ango@calderwoodharkness.com
Attorneys for Plaintiff Optiwave Semiconductor Corp.
Date: June 3, 2022
PLAINTIFFS | DEFENDANTS
Name | Optiwave Semiconductor Corp. | Lumos Photonics, Inc.
County of Residence of First Listed Plaintiff | Santa Clara County, California | Travis County, Texas (HQ); also maintains an office in Santa Clara County, California
State of Incorporation | Delaware | Delaware
Principal Place of Business | California (San Jose) | Texas (Austin)
Address | 2775 Augustine Drive, Suite 400, San Jose, CA 95054 | 9400 McNeil Drive, Building 7, Austin, TX 78758
1. U.S. Government Plaintiff | 2. U.S. Government Defendant
3. Federal Question (U.S. Government Not a Party) | 4. Diversity (Indicate Citizenship of Principal Parties in Item III)
PTF | DEF
Citizen of This State | 1 | 1
Incorporated or Principal Place of Business in This State | 2 | 2
Incorporated and Principal Place of Business in Another State | 3 | 3
Foreign Nation | 4 | 4
Code | Nature of Suit | Selected
820 | Copyrights
830 | Patent | **
835 | Patent — Abbreviated New Drug Application
840 | Trademark
880 | Defend Trade Secrets Act of 2016
Box | Origin | Selected
1 | Original Proceeding | **
2 | Removed from State Court
3 | Remanded from Appellate Court
4 | Reinstated or Reopened
5 | Transferred from Another District (specify)
6 | Multidistrict Litigation — Transfer
8 | Multidistrict Litigation — Direct File
Field | Entry
Judge | None identified at time of filing
Docket Number | None — no related cases pending
Patent No. | Title (Abbreviated) | Issue Date | Earliest Effective Filing Date
U.S. 10,234,567 | Integrated Waveguide Coupler with Tapered Mode Converter | March 19, 2019 | September 12, 2016
U.S. 10,891,234 | Germanium-on-Silicon Photodetector with Graded Buffer Layer | January 14, 2021 | April 3, 2018
U.S. 11,045,678 | Multi-Channel Optical Transceiver with Integrated WDM on Silicon | June 29, 2021 | November 22, 2019
U.S. 11,312,890 | Driver Circuit Architecture for High-Speed Silicon Photonic MZM | April 26, 2022 | February 8, 2021

JS 44 (Rev. 04/21)

CIVIL COVER SHEET

NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE TRACT OF LAND INVOLVED.

II. BASIS OF JURISDICTION

III. CITIZENSHIP OF PRINCIPAL PARTIES

IV. NATURE OF SUIT

V. ORIGIN

VI. CAUSE OF ACTION

VII. REQUESTED IN COMPLAINT

CHECK YES ONLY IF DEMANDED IN COMPLAINT:

VIII. RELATED CASE(S) IF ANY

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SUPPLEMENTAL INFORMATION

CALDERWOOD & HARKNESS LLP

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