UNITED STATES DISTRICT COURT

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
APPENDIX OF INTRINSIC EVIDENCE IN SUPPORT OF PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S OPENING CLAIM CONSTRUCTION BRIEF
Filed: November 15, 2024
Filed in Connection with D.E. 44 (OWS's Opening Claim Construction Brief)
CALDERWOOD & HARKNESS LLP
Alan Ngo (Cal. Bar No. 247831) Responsible Partner ango@calderwoodharkness.com
Marcus Delgado (Cal. Bar No. 265409) Billing Partner mdelgado@calderwoodharkness.com
Wendy Schultz (Cal. Bar No. 312784) Lead Associate wschultz@calderwoodharkness.com
Omar Siddiqui (Cal. Bar No. 328916) Working Associate osiddiqui@calderwoodharkness.com
350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4200 Facsimile: (213) 555-4201
— and —
1201 F Street NW, Suite 700 Washington, DC 20004 Telephone: (202) 555-6100 Facsimile: (202) 555-6101
WHITMORE & CALLAHAN LLP
James "Jim" Callahan (Tex. Bar No. 03891247) Local Counsel jcallahan@whitmorecallahan.com
110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 555-2300 Facsimile: (903) 555-2301
Counsel for Plaintiff Optiwave Semiconductor Corp.
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INTRODUCTION AND KEY TO APPENDIX
Plaintiff Optiwave Semiconductor Corp. ("OWS") respectfully submits this Appendix of Intrinsic Evidence in Support of OWS's Opening Claim Construction Brief (D.E. 44). This Appendix compiles and organizes the intrinsic evidence cited in OWS's Opening Claim Construction Brief, which addresses the construction of the twelve (12) remaining disputed claim terms arising from the four United States patents asserted in this action.
Purpose and Scope
As the Federal Circuit has held, "[i]ntrinsic evidence is the most significant source of the legally operative meaning of disputed claim language." Ridgeway & Co. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The Supreme Court and the Federal Circuit, sitting en banc, have confirmed that the words of the claims themselves, the specification, and the prosecution history constitute the intrinsic evidence that is "the primary basis for construing the claims." Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc); see also Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). Accordingly, this Appendix provides the Court with the complete intrinsic record upon which OWS's proposed constructions are based, compiled and indexed for ease of reference during the Markman proceedings.
This Appendix includes the claims, written descriptions, and prosecution histories of the four asserted patents: U.S. Patent No. 10,234,847 (the "'847 Patent"), U.S. Patent No. 10,891,193 (the "'193 Patent"), U.S. Patent No. 9,678,562 (the "'562 Patent"), and U.S. Patent No. 11,402,015 (the "'015 Patent"). In addition, because related patents and their prosecution histories are intrinsic evidence that may inform the construction of a claim term, see Phillips, 415 F.3d at 1317; Goldenberg v. Cytogen, Inc., 373 F.3d 1158, 1167 (Fed. Cir. 2004), this Appendix also includes materials from related patent filings, including the shared Provisional Application No. 62/499,117, continuation filing data, and consistent term usage across patent families.
The Asserted Patents
The four asserted patents are as follows:
1.  U.S. Patent No. 10,234,847 (the "'847 Patent"), entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss," filed September 14, 2016, and issued March 19, 2019. The '847 Patent is a continuation of the '562 Patent.
2.  U.S. Patent No. 10,891,193 (the "'193 Patent"), entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate," filed April 6, 2018, and issued January 12, 2021. The '193 Patent claims priority to Provisional Application No. 62/499,117, filed April 7, 2017.
3.  U.S. Patent No. 9,678,562 (the "'562 Patent"), entitled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks," filed November 22, 2014, and issued June 13, 2017. The '562 Patent is the parent application in the continuation family that includes the '847 Patent.
4.  U.S. Patent No. 11,402,015 (the "'015 Patent"), entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," filed August 30, 2019, and issued August 2, 2022. The '015 Patent claims priority to Provisional Application No. 62/499,117, filed April 7, 2017, which is the same provisional application from which the '193 Patent claims priority.
Patent Family Relationships
The four asserted patents belong to two related patent families, as summarized below:
Family 1: The '562 Patent (filed November 22, 2014; original assignee Solara Optics, Inc.) is the parent application. The '847 Patent (filed September 14, 2016) is a continuation of the '562 Patent. Both patents share a common specification, and the consistent usage of claim terms across these two related patents is relevant to the claim construction analysis. The '562 Patent was originally assigned to Solara Optics, Inc., and was subsequently assigned to Optiwave Semiconductor Corp. pursuant to an Asset Purchase Agreement dated June 15, 2018, under which OWS acquired a portfolio of twelve patents, including the '562 Patent, for a purchase price of $34.5 million.
Family 2: Provisional Application No. 62/499,117 (filed April 7, 2017) serves as the common priority document for both the '193 Patent (non-provisional filed April 6, 2018) and the '015 Patent (non-provisional filed August 30, 2019). The shared provisional application provides a common disclosure that informs the construction of terms appearing in both patents, including the term "silicon photonic transceiver," which appears in claims of both the '193 and '015 Patents.
Prosecution Counsel
All four asserted patents were prosecuted before the United States Patent and Trademark Office by Cascade IP Advisors, LLC, with Dr. Martin Chu serving as lead prosecution attorney. Dr. Chu's office is located at 1550 Crystal Drive, Suite 600, Arlington, Virginia 22202. Dr. Chu prepared and filed all office action responses, amendments, and declarations referenced in this Appendix.
Original and Current Assignees
The '847, '193, and '015 Patents list Optiwave Semiconductor Corp. as the original assignee. The '562 Patent lists Solara Optics, Inc. as the original assignee. As noted above, the '562 Patent was assigned to Optiwave Semiconductor Corp. via the Asset Purchase Agreement dated June 15, 2018. The recorded assignment is included at Tab RR of this Appendix. All four patents are currently owned by Optiwave Semiconductor Corp.
Key to Tab Numbering Convention
Documents in this Appendix are organized sequentially by Tab, running from Tab A through Tab LLL. Within each Tab, pages are numbered using the prefix "AIE-" followed by a four-digit page number (e.g., AIE-0001, AIE-0002). Where documents within a Tab bear original Bates-stamp numbers from the parties' document productions, those Bates numbers are preserved and a cross-reference to the AIE page numbering is provided at the first page of each such document. All references to this Appendix in OWS's Opening Claim Construction Brief (D.E. 44) use the AIE page numbering system.
Within each Part, Tabs are organized in the following order: (1) claims; (2) specification excerpts; (3) abstract and summary; (4) selected drawings; (5) prosecution history documents, presented in chronological order; and (6) related-patent filings, including continuity data and assignment records.
Where a document is relevant to more than one Part of this Appendix (for example, Provisional Application No. 62/499,117, which is relevant to both the '193 Patent in Part II and the '015 Patent in Part IV), the document is included in full in the first Part in which it appears and cross-referenced by Tab number in subsequent Parts to avoid unnecessary duplication.
PART I: U.S. PATENT NO. 10,234,847 (THE "'847 PATENT")
Section I.A: Claims of the '847 Patent
Tab A (AIE-0001–0018)
The complete text of all claims of U.S. Patent No. 10,234,847, entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss," is reproduced at Tab A of this Appendix. The '847 Patent contains twenty-two (22) claims, including four (4) independent claims (Claims 1, 9, 14, and 19) and eighteen (18) dependent claims.
Asserted Claims.  OWS asserts Claims 1, 3, 5, 9, and 14 of the '847 Patent against Lumicore Technologies, Inc. These asserted claims are reproduced below in bold text.
Claim 1 (independent): A multi-channel silicon photonic device comprising: a waveguide multiplexer configured to combine a plurality of optical signals of different wavelengths onto a single output waveguide with low insertion loss; a plurality of input waveguides, each input waveguide coupled to the waveguide multiplexer and configured to carry an optical signal of a respective wavelength channel; and the single output waveguide coupled to an output port of the waveguide multiplexer.
Claim 2 (dependent on Claim 1): The multi-channel silicon photonic device of claim 1, wherein the plurality of optical signals comprises at least four optical signals.
Claim 3 (dependent on Claim 1): The multi-channel silicon photonic device of claim 1, wherein the waveguide multiplexer comprises an arrayed waveguide grating having a plurality of phase-shifted waveguides connecting a first slab coupler region and a second slab coupler region.
Claim 4 (dependent on Claim 3): The multi-channel silicon photonic device of claim 3, wherein the plurality of phase-shifted waveguides comprises at least eight waveguides with incrementally varying path lengths.
Claim 5 (dependent on Claim 1): The multi-channel silicon photonic device of claim 1, wherein the waveguide multiplexer comprises an Echelle grating configured to diffract and combine the plurality of optical signals of different wavelengths.
Claim 6 (dependent on Claim 1): The multi-channel silicon photonic device of claim 1, wherein the waveguide multiplexer comprises a cascaded Mach-Zehnder interferometer structure.
Claim 7 (dependent on Claim 1): The multi-channel silicon photonic device of claim 1, further comprising a monitoring tap coupled to the single output waveguide and configured to provide a feedback signal indicative of insertion loss.
Claim 8 (dependent on Claim 7): The multi-channel silicon photonic device of claim 7, further comprising a control circuit coupled to the monitoring tap and configured to adjust operating parameters of the waveguide multiplexer to minimize insertion loss.
Claim 9 (independent): A silicon photonic wavelength division multiplexing device comprising: a plurality of laser source inputs, each providing an optical signal at a distinct wavelength; means for coupling light into said waveguide multiplexer from each of said plurality of laser source inputs; a waveguide multiplexer for combining the optical signals from the plurality of laser source inputs into a combined optical signal on a common output waveguide; and an output fiber coupler for coupling the combined optical signal from the common output waveguide to an optical fiber.
Claim 10 (dependent on Claim 9): The device of claim 9, wherein the means for coupling light into said waveguide multiplexer comprises a spot-size converter.
Claim 11 (dependent on Claim 9): The device of claim 9, wherein the means for coupling light into said waveguide multiplexer comprises a grating coupler.
Claim 12 (dependent on Claim 9): The device of claim 9, wherein the waveguide multiplexer exhibits an insertion loss of less than 1.5 dB per channel.
Claim 13 (dependent on Claim 12): The device of claim 12, wherein the insertion loss is less than 0.8 dB per channel.
Claim 14 (independent): A method of wavelength division multiplexing in a silicon photonic integrated circuit, the method comprising: receiving, at a waveguide multiplexer integrated on a silicon substrate, a plurality of optical signals of different wavelengths from a corresponding plurality of input waveguides; combining, by the waveguide multiplexer, the plurality of optical signals onto a single output waveguide with low insertion loss; and transmitting the combined optical signal from the single output waveguide to an output coupling element.
Claim 15 (dependent on Claim 14): The method of claim 14, further comprising monitoring an insertion loss of the waveguide multiplexer.
Claim 16 (dependent on Claim 15): The method of claim 15, further comprising adjusting a thermal tuning element of the waveguide multiplexer in response to the monitored insertion loss.
Claim 17 (dependent on Claim 14): The method of claim 14, wherein the waveguide multiplexer combines at least eight optical signals of different wavelengths.
Claim 18 (dependent on Claim 14): The method of claim 14, wherein the combining step utilizes at least one of: an arrayed waveguide grating, an Echelle grating, or a cascaded Mach-Zehnder interferometer.
Claim 19 (independent): A photonic integrated circuit comprising: a silicon-on-insulator substrate; a waveguide multiplexer formed on the silicon-on-insulator substrate; a plurality of input waveguides coupled to the waveguide multiplexer; a single output waveguide coupled to the waveguide multiplexer; and wherein the waveguide multiplexer is configured to combine optical signals from the plurality of input waveguides onto the single output waveguide with an insertion loss of less than 2 dB per channel across a wavelength range of at least 30 nm.
Claim 20 (dependent on Claim 19): The photonic integrated circuit of claim 19, wherein the waveguide multiplexer comprises a thermally tunable element.
Claim 21 (dependent on Claim 19): The photonic integrated circuit of claim 19, further comprising a demultiplexer formed on the silicon-on-insulator substrate.
Claim 22 (dependent on Claim 21): The photonic integrated circuit of claim 21, wherein the demultiplexer and the waveguide multiplexer share a common grating structure.
Disputed Claim Terms in the '847 Patent
The following disputed claim terms appear in the asserted claims of the '847 Patent:
1.  "waveguide multiplexer" — This term appears in each of the five asserted claims (Claims 1, 3, 5, 9, and 14). It is the central disputed term for the '847 Patent.
2.  "low insertion loss" — This term appears in Claims 1 and 14.
3.  "means for coupling light into said waveguide" — This term appears in Claim 9 and is identified as a potentially means-plus-function limitation subject to 35 U.S.C. § 112(f). The parties dispute whether Claim 9 invokes § 112(f) with respect to this limitation, and if so, the corresponding structure disclosed in the specification.
Means-Plus-Function Identification — Claim 9
Independent Claim 9 recites "means for coupling light into said waveguide multiplexer from each of said plurality of laser source inputs." Because this limitation uses the word "means" followed by a functional recitation, it is presumptively governed by 35 U.S.C. § 112(f). See Ostrander Holdings, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). OWS does not dispute that this limitation is governed by § 112(f), but contends that the corresponding structure disclosed in the specification includes both spot-size converters and grating couplers, as described in the '847 Patent specification at column 8, lines 14–45, and depicted in Figures 7A–7C (see Tab B, AIE-0042–0044; Tab D, AIE-0088–0090). Lumicore contends that the corresponding structure is limited to the specific spot-size converter embodiment depicted in Figure 7A. This dispute is addressed in OWS's Opening Claim Construction Brief (D.E. 44) at pages 22–28.
Claim Dependency Chart
The following chart illustrates the dependency relationships among the asserted claims of the '847 Patent. This chart is relevant to the claim-differentiation analysis discussed in OWS's Opening Claim Construction Brief (D.E. 44) at pages 14–16.
The claim-differentiation doctrine holds that "[t]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim." Phillips, 415 F.3d at 1315 (citing Ashford Enterprises v. Dunmore Corporation, 358 F.3d 898, 910 (Fed. Cir. 2004)). Dependent Claim 3 narrows the "waveguide multiplexer" of independent Claim 1 to an "arrayed waveguide grating having a plurality of phase-shifted waveguides connecting a first slab coupler region and a second slab coupler region." Dependent Claim 5 narrows the "waveguide multiplexer" of independent Claim 1 to an "Echelle grating." Non-asserted dependent Claim 6 narrows the "waveguide multiplexer" to a "cascaded Mach-Zehnder interferometer structure." The existence of these dependent claims, each specifying a different multiplexer architecture, gives rise to a strong presumption that independent Claim 1's recitation of "waveguide multiplexer" is not limited to any single architecture — and, in particular, is not limited to the "arrayed waveguide grating" construction that Lumicore proposes for the independent claim.
Lumicore argues that independent Claim 1 should be construed to require an arrayed waveguide grating configuration, asserting that the specification's discussion of AWGs as the "preferred embodiment" limits the plain meaning of "waveguide multiplexer." OWS submits that this argument directly contravenes the claim-differentiation doctrine, as adopting Lumicore's construction would render dependent Claims 3, 5, and 6 superfluous. See Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1381 (Fed. Cir. 2006) ("We apply the doctrine of claim differentiation . . . as an analytic tool to show that two claims in a patent are not to be given the same meaning.").
Section I.B: Specification of the '847 Patent
Tabs B, C, and D (AIE-0019–0098)
General Information.  
•  Title: Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss
•  Filing Date: September 14, 2016
•  Issue Date: March 19, 2019
•  Application No.: 15/265,841
•  Assignee: Optiwave Semiconductor Corp.
•  Named Inventors: Dr. Jian-Wei Huang; Dr. Christine Nakamura; Rajesh Patel
•  Examiner: Teresa Kim (Art Unit 2874)
Abstract.  The Abstract of the '847 Patent (Tab C, AIE-0073) reads as follows:
A multi-channel silicon photonic device including a waveguide multiplexer configured to combine a plurality of optical signals of different wavelengths onto a single output waveguide with low insertion loss. The waveguide multiplexer may comprise an arrayed waveguide grating, an Echelle grating, a cascaded Mach-Zehnder interferometer, or other suitable wavelength-combining structure. The device is fabricated on a silicon-on-insulator substrate and achieves insertion losses below 1.5 dB per channel over a wavelength range of at least 30 nm. Thermal tuning elements may be integrated with the waveguide multiplexer to compensate for fabrication-induced phase errors and temperature-dependent performance variations.
The Abstract itself demonstrates that the '847 Patent describes the "waveguide multiplexer" broadly, encompassing multiple architectures — "an arrayed waveguide grating, an Echelle grating, a cascaded Mach-Zehnder interferometer, or other suitable wavelength-combining structure." This language is directly inconsistent with Lumicore's proposed construction, which would limit the term to a single architecture (arrayed waveguide grating with a slab coupler and phase-shifted waveguide array).
Summary of the Invention
The Summary of the Invention section (Tab C, AIE-0074–0078) provides the following relevant disclosures regarding the term "waveguide multiplexer":
"In one aspect, the present invention provides a multi-channel silicon photonic device comprising a waveguide multiplexer configured to combine a plurality of optical signals of different wavelengths onto a single output waveguide. The waveguide multiplexer, as used herein, refers broadly to an optical device that combines multiple optical signals of different wavelengths onto a single waveguide. The waveguide multiplexer may take various forms, including but not limited to an arrayed waveguide grating (AWG), an Echelle grating, a cascaded Mach-Zehnder interferometer (MZI), a ring-resonator-based multiplexer, or any other suitable integrated photonic structure capable of performing wavelength combining on a silicon photonic platform."
('847 Patent, col. 2, ll. 15–27) (Tab B, AIE-0024)
This passage is significant because it provides an express definition of "waveguide multiplexer" — "an optical device that combines multiple optical signals of different wavelengths onto a single waveguide" — which is consistent with OWS's proposed construction and inconsistent with Lumicore's proposed limitation to arrayed waveguide gratings.
The Summary further states:
"The waveguide multiplexer of the present invention achieves low insertion loss through careful optimization of the waveguide geometry, coupler design, and phase matching conditions. In embodiments employing an arrayed waveguide grating, low insertion loss is achieved through precise control of waveguide path-length differences and the use of adiabatic tapers at the slab-to-waveguide transitions. In embodiments employing an Echelle grating, low insertion loss is achieved through optimization of the grating facet profile and the use of a deeply etched reflecting surface. In embodiments employing a cascaded Mach-Zehnder interferometer, low insertion loss is achieved through balanced splitting ratios and thermally compensated delay lengths."
('847 Patent, col. 2, ll. 42–56) (Tab B, AIE-0025)
This passage confirms that the specification describes low-insertion-loss characteristics across multiple multiplexer architectures, not merely for arrayed waveguide gratings. The specification does not privilege the AWG embodiment as the exclusive or even primary embodiment; rather, it treats AWGs, Echelle gratings, and cascaded MZIs as co-equal implementations of the broader "waveguide multiplexer" concept.
Detailed Description — Multiple Embodiments
The Detailed Description section of the '847 Patent provides extensive disclosures regarding multiple embodiments of the waveguide multiplexer. The following excerpts are among the most relevant to the claim construction dispute.
Arrayed Waveguide Grating Embodiment.  
"Referring now to FIGS. 1 and 2, a first embodiment of the waveguide multiplexer 100 is shown. In this embodiment, the waveguide multiplexer 100 comprises an arrayed waveguide grating (AWG) having a first slab coupler region 110, a second slab coupler region 120, and a plurality of phase-shifted waveguides 130 connecting the first and second slab coupler regions. The plurality of input waveguides 140 are coupled to the first slab coupler region 110, and the single output waveguide 150 is coupled to the second slab coupler region 120."
('847 Patent, col. 4, ll. 20–30) (Tab B, AIE-0030)
This passage describes the AWG embodiment. Critically, it is introduced as "a first embodiment" — not as the sole embodiment or the required structure of the claimed waveguide multiplexer.
Echelle Grating Embodiment.  
"Referring now to FIGS. 3 and 4, a second embodiment of the waveguide multiplexer 200 is shown. In this embodiment, the waveguide multiplexer 200 comprises an Echelle grating 210 formed at the edge of a planar waveguide region 220. The Echelle grating 210 comprises a curved reflecting surface with a plurality of grating facets configured to diffract and focus the optical signals of different wavelengths from the plurality of input waveguides 240 onto the single output waveguide 250. The Echelle grating embodiment offers advantages in terms of compact footprint and reduced sensitivity to fabrication variations compared to the AWG embodiment."
('847 Patent, col. 6, ll. 5–17) (Tab B, AIE-0036)
Cascaded Mach-Zehnder Interferometer Embodiment.  
"Referring now to FIG. 9, a third embodiment of the waveguide multiplexer 300 is shown. In this embodiment, the waveguide multiplexer 300 comprises a cascaded Mach-Zehnder interferometer (MZI) structure in which a plurality of MZI stages are connected in series. Each MZI stage comprises a pair of directional couplers connected by two waveguide arms of different optical path lengths. By cascading multiple MZI stages with appropriately selected delay lengths, the cascaded MZI multiplexer achieves wavelength combining across multiple channels."
('847 Patent, col. 9, ll. 22–33) (Tab B, AIE-0048)
Ring-Resonator-Based Multiplexer Embodiment.  
"In yet another embodiment (not separately depicted), the waveguide multiplexer may comprise a plurality of ring resonators, each tuned to a respective wavelength channel, coupled to a common bus waveguide. In this configuration, each ring resonator selectively drops light of its resonant wavelength from a respective input waveguide onto the common bus waveguide, thereby combining the plurality of optical signals onto a single output waveguide."
('847 Patent, col. 10, ll. 8–16) (Tab B, AIE-0050)
These passages, taken together, demonstrate that the '847 Patent specification describes at least four distinct architectures for the "waveguide multiplexer" — arrayed waveguide gratings, Echelle gratings, cascaded Mach-Zehnder interferometers, and ring-resonator-based structures. The specification does not limit the term "waveguide multiplexer" to any single one of these architectures. To the contrary, the specification expressly states that the waveguide multiplexer "may take various forms, including but not limited to" these architectures. ('847 Patent, col. 2, ll. 22–24.)
Low-Insertion-Loss Characteristics.  The specification provides the following relevant disclosures regarding the term "low insertion loss":
"As used herein, the term 'low insertion loss' refers to an insertion loss that is sufficiently low to enable practical deployment of the multi-channel silicon photonic device in telecommunications and data communications applications. In preferred embodiments, the insertion loss per channel is less than 1.5 dB. In particularly preferred embodiments, the insertion loss per channel is less than 0.8 dB. However, the term 'low insertion loss' is not limited to any particular numerical threshold, and one of ordinary skill in the art would understand the term to encompass insertion losses that are lower than those achievable with conventional silicon photonic multiplexer designs of comparable channel count and wavelength range."
('847 Patent, col. 3, ll. 30–42) (Tab B, AIE-0027)
Drawings.  The following drawings of the '847 Patent are included at Tab D (AIE-0079–0098) and are referenced in OWS's Opening Claim Construction Brief:
•  Figure 1: Plan view of waveguide multiplexer (AWG embodiment) showing first slab coupler, arrayed waveguides, and second slab coupler.
•  Figure 2: Cross-sectional view of the silicon-on-insulator waveguide structure used in the AWG embodiment.
•  Figure 3: Plan view of waveguide multiplexer (Echelle grating embodiment) showing curved reflecting surface and grating facets.
•  Figure 4: Detail view of Echelle grating facet profile.
•  Figures 7A–7C: Three embodiments of coupling structures: (7A) spot-size converter; (7B) grating coupler; (7C) evanescent coupler. These figures are relevant to the means-plus-function analysis for Claim 9.
•  Figure 9: Plan view of waveguide multiplexer (cascaded MZI embodiment) showing series-connected MZI stages.
•  Figure 12: Performance graph showing insertion loss versus wavelength for the multi-channel device, demonstrating low insertion loss across the C-band.
Section I.C: Prosecution History of the '847 Patent
I.C.1: Application as Filed
Tab E (AIE-0099–0134)
The application that matured into the '847 Patent was filed on September 14, 2016, as U.S. Application No. 15/265,841. The application was filed as a continuation of U.S. Application No. 14/550,312 (which matured into the '562 Patent, issued June 13, 2017). The application as filed contained twenty-four (24) original claims, including four independent claims. The original claims included the term "waveguide multiplexer" in the same form as it appears in the issued claims. No amendment was made to the term "waveguide multiplexer" during prosecution.
The application as filed included a priority claim to the '562 Patent under 35 U.S.C. § 120. The Application Data Sheet (ADS) identified the continuation relationship and claimed the benefit of the November 22, 2014 filing date of the '562 Patent. The original claims are reproduced in full at Tab E (AIE-0108–0120).
I.C.2: First Office Action
Tab F (AIE-0135–0156)
The first Office Action in the prosecution of the '847 Patent was mailed on March 22, 2017 by Examiner Teresa Kim (Art Unit 2874). The Examiner rejected Claims 1–8 and 14–18 under 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent No. 7,539,362 to Doerr et al. ("Doerr," issued May 26, 2009) in view of U.S. Patent Application Publication No. 2014/0153882 to Chen et al. ("Chen"). The Examiner also rejected Claims 9–13 under § 103(a) over Doerr in view of Chen and further in view of U.S. Patent No. 8,412,007 to Bergmann ("Bergmann," issued April 2, 2013).
The Examiner interpreted the term "waveguide multiplexer" as encompassing multiple wavelength-combining architectures, stating:
"Doerr discloses a waveguide multiplexer in the form of an arrayed waveguide grating for combining optical signals of different wavelengths (Doerr, col. 4, ll. 12–25). The claim term 'waveguide multiplexer' is given its broadest reasonable interpretation consistent with the specification, which describes various architectures including arrayed waveguide gratings, Echelle gratings, and cascaded MZI structures."
(First Office Action, p. 4) (Tab F, AIE-0140)
This statement by the Examiner is significant because it confirms that the Patent Office interpreted the term "waveguide multiplexer" broadly during prosecution, consistent with OWS's proposed construction and inconsistent with Lumicore's proposed narrow construction.
I.C.3: Applicant's Response to First Office Action
Tab G (AIE-0157–0189)
The Applicant's Response to the first Office Action was filed on June 22, 2017 by Dr. Martin Chu of Cascade IP Advisors, LLC. The response included minor amendments to Claims 19–22 (not at issue in this litigation) but did not amend the term "waveguide multiplexer" in any claim. The response traversed the § 103 rejection over Doerr and Chen by arguing that the combination did not teach or suggest the claimed "low insertion loss" achieved through the specific structural features recited in the claims.
Regarding the scope of "waveguide multiplexer," Dr. Chu stated in the response:
"Applicant respectfully notes that, consistent with the Examiner's interpretation, the term 'waveguide multiplexer' as used in the claims encompasses a broad range of wavelength-combining structures, as described in the specification at column 2, lines 15–27. The distinguishing features of the present invention reside not in the selection of a particular multiplexer architecture, but in the low insertion loss achieved through the optimization techniques described in the specification."
(Response to First Office Action, p. 8) (Tab G, AIE-0168)
This statement by the applicant during prosecution is intrinsic evidence that the patentee intended the term "waveguide multiplexer" to be construed broadly, consistent with the specification's express definition. It is also evidence that the applicant did not disclaim any particular multiplexer architecture during prosecution.
I.C.4: Subsequent Office Actions and Responses
Tabs H, I, J, and K (AIE-0190–0286)
Second Office Action (September 8, 2017).  The Examiner issued a second (non-final) Office Action on September 8, 2017. The Examiner maintained the § 103 rejection over Doerr and Chen, finding the applicant's arguments regarding "low insertion loss" unpersuasive. The Examiner additionally cited U.S. Patent Application Publication No. 2015/0286009 to Watanabe et al. ("Watanabe") as a secondary reference teaching low-insertion-loss techniques in silicon photonic multiplexers. The Examiner's interpretation of "waveguide multiplexer" remained unchanged from the first Office Action. (Tab H, AIE-0190–0210.)
Applicant's Response to Second Office Action (December 8, 2017).  The Applicant's Response, filed December 8, 2017, again traversed the § 103 rejection by presenting detailed technical arguments distinguishing the claimed low-insertion-loss architecture from the structures disclosed in Doerr, Chen, and Watanabe. The response included amendments to certain dependent claims to add specificity regarding waveguide geometry and taper design but did not amend the term "waveguide multiplexer" or "low insertion loss" in any asserted claim. (Tab I, AIE-0211–0240.)
Final Rejection (February 16, 2018).  The Examiner issued a Final Rejection on February 16, 2018, maintaining the § 103 rejections. The Examiner found that the combination of Doerr, Chen, and Watanabe rendered the claims obvious. Two original claims (Claims 23 and 24) were cancelled by the applicant in the response to the final rejection. (Tab J, AIE-0241–0258.)
Applicant's Response to Final Rejection (April 16, 2018).  The Applicant filed a response to the Final Rejection on April 16, 2018, under 37 C.F.R. § 1.116. The response was accompanied by a Declaration under 37 C.F.R. § 1.132 by Dr. Jian-Wei Huang (discussed in Section I.C.6 below). The response argued that one of ordinary skill in the art would not have been motivated to combine the references in the manner proposed by the Examiner and that the claimed combination achieved unexpected results in terms of insertion-loss reduction. The applicant cancelled Claims 23 and 24 and did not otherwise amend the remaining claims. The term "waveguide multiplexer" was not amended. (Tab K, AIE-0259–0286.)
I.C.5: Examiner Interview Summaries
Tab L (AIE-0287–0292)
An Examiner Interview was conducted on May 3, 2018, between Dr. Martin Chu and Examiner Teresa Kim. The Examiner Interview Summary (filed May 7, 2018) reflects the following relevant discussion:
"The applicant's representative discussed the Declaration of Dr. Jian-Wei Huang and the unexpected insertion-loss results achieved by the claimed multi-channel device. The Examiner agreed that the Declaration provided persuasive evidence of unexpected results that weighed against the prima facie case of obviousness. The parties also discussed the scope of 'waveguide multiplexer' as used in the claims. The Examiner stated that her interpretation of the term is consistent with the broad definition provided in the specification at column 2, lines 15–27. No agreement was reached regarding allowance of the claims at this time, but the Examiner indicated she would further consider the Declaration and applicant's arguments."
(Examiner Interview Summary, p. 2) (Tab L, AIE-0289)
The Applicant's summary of the interview, filed separately, is consistent with the Examiner's summary and confirms that the scope of "waveguide multiplexer" was discussed and that the Examiner agreed the term should be construed consistently with the broad definition in the specification. (Tab L, AIE-0291.)
I.C.6: Declarations Filed During Prosecution
Tab N (AIE-0305–0318)
A Declaration under 37 C.F.R. § 1.132 by Dr. Jian-Wei Huang, the lead named inventor of the '847 Patent, was submitted on April 16, 2018, in connection with the Applicant's response to the Final Rejection. In the Declaration, Dr. Huang attested to the following:
1.  Dr. Huang is a named inventor on the '847 Patent and has worked in the field of silicon photonics for over fifteen years.
2.  Dr. Huang reviewed the prior art references cited by the Examiner (Doerr, Chen, and Watanabe) and provided his expert opinion that the combination proposed by the Examiner would not have been obvious to one of ordinary skill in the art.
3.  Dr. Huang presented experimental data showing that the multi-channel silicon photonic device of the '847 Patent achieves insertion losses of less than 0.8 dB per channel across the C-band — a result that Dr. Huang described as "unexpected" and significantly superior to the prior art.
4.  Dr. Huang confirmed that the term "waveguide multiplexer" as used in the patent application and claims is intended to encompass multiple multiplexer architectures, including but not limited to arrayed waveguide gratings, Echelle gratings, and cascaded Mach-Zehnder interferometers. Dr. Huang stated: "The invention is directed to achieving low insertion loss in silicon photonic wavelength division multiplexing devices, and the benefits of the invention are applicable to range multiplexer architectures, not limited to any single implementation."
(Declaration of Dr. Jian-Wei Huang, ¶¶ 3–12) (Tab N, AIE-0308–0314)
I.C.7: Notice of Allowance
Tab M (AIE-0293–0304)
The Notice of Allowance was mailed on October 2, 2018. In the Examiner's Statement of Reasons for Allowance, Examiner Kim stated:
"The prior art of record, taken alone or in combination, does not teach or suggest a multi-channel silicon photonic device comprising a waveguide multiplexer configured to combine a plurality of optical signals of different wavelengths onto a single output waveguide with the claimed low insertion loss characteristics, in combination with the other limitations of the independent claims. The Declaration of Dr. Jian-Wei Huang filed April 16, 2018 was considered and found persuasive regarding the unexpected results achieved by the claimed invention."
(Notice of Allowance, Reasons for Allowance, p. 2) (Tab M, AIE-0296)
The Examiner's reasons for allowance do not reference any narrowing of the term "waveguide multiplexer" to a particular architecture. The allowance was predicated on the overall combination of limitations, including the low-insertion-loss characteristics, rather than on any narrowing of the multiplexer structure.
Section I.D: Related-Patent Filings for the '847 Patent
Tab O (AIE-0319–0328)
Continuation Relationship with the '562 Patent
The '847 Patent is a continuation of U.S. Application No. 14/550,312, which matured into U.S. Patent No. 9,678,562 (the '562 Patent). The continuity data is as follows:
Because the '847 Patent is a continuation of the '562 Patent, the two patents share a common specification. Terms used in the claims of both patents should be construed consistently across the patent family. See NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005) ("Because the patents share a common specification, terms common to the patents should be construed consistently.").
Terminal Disclaimer.  A terminal disclaimer was filed during prosecution of the '847 Patent on April 16, 2018, disclaiming the terminal portion of the '847 Patent that would extend beyond the expiration date of the '562 Patent. The terminal disclaimer was accepted by the USPTO. The terminal disclaimer is relevant to confirming the close relationship between the two patents but does not affect the scope of the claims. A copy of the terminal disclaimer is included at Tab O (AIE-0325–0326).
Consistent Usage of Terms
The '562 Patent specification, which is shared with the '847 Patent as a continuation application, uses the term "waveguide multiplexer" in a manner consistent with the broad definition provided in the '847 Patent specification. The '562 Patent specification also references multiple multiplexer architectures and does not limit the term to arrayed waveguide gratings. Additionally, the '562 Patent specification contains references to thermal management of photonic integrated circuits — the subject matter of the '562 Patent claims — in the context of waveguide multiplexer devices, providing further context for the construction of terms appearing in both patents.
PART II: U.S. PATENT NO. 10,891,193 (THE "'193 PATENT")
Section II.A: Claims of the '193 Patent
Tab P (AIE-0329–0350)
The complete text of all claims of U.S. Patent No. 10,891,193, entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate," is reproduced at Tab P of this Appendix. The '193 Patent contains twenty-four (24) claims, including three (3) independent claims (Claims 1, 10, and 18) and twenty-one (21) dependent claims.
Asserted Claims.  OWS asserts Claims 1, 3, 7, 10, 15, and 18 of the '193 Patent against Lumicore Technologies, Inc. These asserted claims are reproduced below in bold text.
Claim 1 (independent): A high-bandwidth coherent optical transceiver integrated on a silicon substrate, the transceiver comprising: a transmitter module configured to modulate a plurality of optical carrier signals using quadrature amplitude modulation to generate a plurality of modulated optical signals; a receiver module comprising a coherent detection element configured to detect the plurality of modulated optical signals; and a silicon photonic transceiver interface coupling the transmitter module and the receiver module to at least one optical fiber.
Claim 2 (dependent on Claim 1): The transceiver of claim 1, wherein the transmitter module comprises a plurality of Mach-Zehnder modulators.
Claim 3 (dependent on Claim 1): The transceiver of claim 1, wherein the receiver module further comprises a coherent detection module configured to perform intradyne coherent detection of the plurality of modulated optical signals using a local oscillator laser integrated on the silicon substrate.
Claim 4 (dependent on Claim 3): The transceiver of claim 3, wherein the coherent detection module comprises a 90-degree optical hybrid.
Claim 5 (dependent on Claim 3): The transceiver of claim 3, wherein the local oscillator laser is heterogeneously integrated on the silicon substrate using wafer bonding.
Claim 6 (dependent on Claim 3): The transceiver of claim 3, wherein the coherent detection module further comprises a plurality of balanced photodetectors.
Claim 7 (dependent on Claim 3): The transceiver of claim 3, wherein the coherent detection module is configured to process dual-polarization signals and comprises a polarization beam splitter integrated on the silicon substrate.
Claim 8 (dependent on Claim 1): The transceiver of claim 1, further comprising a digital signal processing unit electrically coupled to the receiver module.
Claim 9 (dependent on Claim 1): The transceiver of claim 1, wherein the transceiver operates at data rates of at least 400 Gbps.
Claim 10 (independent): A silicon photonic transceiver comprising: a silicon substrate; a coherent transmitter formed on the silicon substrate, the coherent transmitter comprising at least one optical modulator integrated on a silicon substrate; a coherent receiver formed on the silicon substrate, the coherent receiver comprising a coherent detection element and a plurality of photodetectors integrated on a silicon substrate; and a wavelength division multiplexing interface for coupling a plurality of wavelength channels to an optical fiber.
Claim 11 (dependent on Claim 10): The transceiver of claim 10, wherein the at least one optical modulator comprises a depletion-mode silicon Mach-Zehnder modulator.
Claim 12 (dependent on Claim 10): The transceiver of claim 10, further comprising a laser source heterogeneously integrated on the silicon substrate.
Claim 13 (dependent on Claim 10): The transceiver of claim 10, wherein the plurality of photodetectors comprises germanium-on-silicon photodetectors.
Claim 14 (dependent on Claim 10): The transceiver of claim 10, further comprising thermal management structures integrated on the silicon substrate for dissipating heat from the coherent transmitter and the coherent receiver.
Claim 15 (dependent on Claim 10): The transceiver of claim 10, further comprising means for detecting a coherent optical signal from the optical fiber, wherein the means for detecting is coupled to the coherent receiver.
Claim 16 (dependent on Claim 15): The transceiver of claim 15, wherein the means for detecting a coherent optical signal comprises a 90-degree optical hybrid and associated balanced photodetectors.
Claim 17 (dependent on Claim 10): The transceiver of claim 10, wherein the wavelength division multiplexing interface comprises an arrayed waveguide grating.
Claim 18 (independent): A method of coherent optical communication using a silicon photonic transceiver, the method comprising: generating, by a transmitter module integrated on a silicon substrate, a plurality of modulated optical signals using coherent modulation; transmitting the plurality of modulated optical signals through an optical fiber; receiving, by a receiver module integrated on a silicon substrate, the plurality of modulated optical signals; and detecting, by a coherent detection element of the receiver module, the plurality of modulated optical signals using coherent detection techniques.
Claim 19 (dependent on Claim 18): The method of claim 18, wherein the coherent modulation comprises dual-polarization quadrature phase-shift keying (DP-QPSK).
Claim 20 (dependent on Claim 18): The method of claim 18, further comprising performing digital signal processing on the detected optical signals to compensate for chromatic dispersion and polarization mode dispersion.
Claim 21 (dependent on Claim 18): The method of claim 18, wherein the generating step and the detecting step are performed on a single silicon die.
Claim 22 (dependent on Claim 18): The method of claim 18, wherein the detecting step comprises intradyne detection using a local oscillator laser integrated on the silicon substrate.
Claim 23 (dependent on Claim 22): The method of claim 22, wherein the local oscillator laser is heterogeneously bonded to the silicon substrate using a III-V semiconductor material.
Claim 24 (dependent on Claim 18): The method of claim 18, further comprising thermally managing the silicon photonic transceiver using embedded micro-channel heat sinks integrated on the silicon substrate.
Disputed Claim Terms in the '193 Patent
The following disputed claim terms appear in the asserted claims of the '193 Patent:
1.  "integrated on a silicon substrate" — This phrase appears in Claims 1, 10, and 18 (all independent claims). It is a central disputed term.
•  OWS's proposed construction: "formed on or within a silicon-based wafer using semiconductor fabrication processes"
•  Lumicore's proposed construction: "monolithically fabricated on a single silicon die without hybrid bonding or heterogeneous integration"
2.  "Coherent detection module" — This term appears in Claims 3 and 7.
•  The parties dispute the scope of this term in light of the narrowing amendment made during prosecution (discussed in Section II.C.4 below).
3.  "means for detecting a coherent optical signal" — This limitation appears in Claim 15 and is identified as a means-plus-function limitation subject to 35 U.S.C. § 112(f).
4.  "silicon photonic transceiver" — This term appears in Claims 1, 10, and 18 of the '193 Patent and in Claims 1 and 8 of the '015 Patent. It is a cross-patent disputed term.
Means-Plus-Function Identification — Claim 15
Claim 15 recites "means for detecting a coherent optical signal from the optical fiber, wherein the means for detecting is coupled to the coherent receiver." This limitation uses the word "means" followed by functional language and is therefore presumptively governed by 35 U.S.C. § 112(f). OWS identifies the corresponding structure in the specification as a 90-degree optical hybrid with associated balanced photodetectors, as described at column 12, lines 32–55 of the '193 Patent and depicted in Figure 8B. (Tab Q, AIE-0392–0394; Tab S, AIE-0436.) Dependent Claim 16 further confirms this structure. Lumicore contends that the corresponding structure is limited to the specific photodetector configuration shown in Figure 8B, excluding the germanium-on-silicon photodetector embodiment described at column 13, lines 8–22.
Claim Dependency Chart
Section II.B: Specification of the '193 Patent
Tabs Q, R, and S (AIE-0351–0448)
General Information.  
•  Title: High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate
•  Filing Date: April 6, 2018
•  Issue Date: January 12, 2021
•  Application No.: 15/946,782
•  Assignee: Optiwave Semiconductor Corp.
•  Named Inventors: Dr. Jian-Wei Huang; Dr. Christine Nakamura; Dr. Amir Farzaneh
•  Examiner: David Lam (Art Unit 2883)
•  Priority: Claims the benefit of Provisional Application No. 62/499,117, filed April 7, 2017
Abstract.  The Abstract of the '193 Patent (Tab R, AIE-0416) reads as follows:
A high-bandwidth coherent optical transceiver integrated on a silicon substrate. The transceiver includes a transmitter module configured to generate modulated optical signals using coherent modulation techniques and a receiver module including a coherent detection module for intradyne or homodyne detection of the modulated optical signals. The transceiver components are integrated on a silicon substrate using semiconductor fabrication processes, which may include monolithic integration, hybrid bonding, or heterogeneous integration of III-V semiconductor materials. The transceiver achieves data rates of at least 400 Gbps per fiber and is suitable for deployment in data center and telecommunications applications.
The Abstract is significant because it expressly describes integration on a silicon substrate "using semiconductor fabrication processes, which may include monolithic integration, hybrid bonding, or heterogeneous integration of III-V semiconductor materials." This language directly contradicts Lumicore's proposed construction of "integrated on a silicon substrate," which would exclude hybrid bonding and heterogeneous integration.
Specification Excerpts — "Integrated on a Silicon Substrate"
The specification of the '193 Patent contains the following relevant passages regarding the disputed term "integrated on a silicon substrate":
"As used herein, the phrase 'integrated on a silicon substrate' refers to components that are formed on or within a silicon-based wafer using semiconductor fabrication processes. These processes include, but are not limited to, monolithic complementary metal-oxide-semiconductor (CMOS) compatible fabrication, heterogeneous integration (in which III-V semiconductor materials are bonded to a silicon wafer using wafer bonding techniques), and hybrid integration (in which separately fabricated components are assembled onto a common silicon substrate using flip-chip bonding, micro-transfer printing, or other assembly techniques). The term 'integrated on a silicon substrate' is used broadly to encompass all of these approaches, as each approach results in a transceiver in which the critical optical and electronic components are physically situated on or within a silicon substrate."
('193 Patent, col. 4, ll. 10–25) (Tab Q, AIE-0360)
This passage provides an express definition of the disputed term that is consistent with OWS's proposed construction and directly refutes Lumicore's proposed limitation to monolithic fabrication. The specification does not merely describe heterogeneous and hybrid integration as background or unrelated alternatives; rather, it expressly includes these approaches within the definition of "integrated on a silicon substrate."
The specification further states:
"In a preferred embodiment, the transmitter module and receiver module are monolithically integrated on a silicon-on-insulator (SOI) substrate. However, certain components — particularly the laser sources and certain photodetector elements — may be heterogeneously integrated using III-V semiconductor materials bonded to the SOI substrate. The use of heterogeneous integration allows the designer to leverage the superior optical gain characteristics of III-V materials while maintaining the advantages of silicon photonic integration for passive components, modulators, and waveguides."
('193 Patent, col. 5, ll. 48–58) (Tab Q, AIE-0363)
"Referring to FIG. 5, the silicon photonic transceiver 500 is shown in a configuration in which a plurality of III-V laser sources 510 are heterogeneously bonded to the SOI substrate 520 using a polymer adhesive bonding layer 515. The modulator array 530, waveguide routing layer 540, and coherent detection module 550 are monolithically formed on the SOI substrate 520. This configuration represents a practical implementation of the present invention in which heterogeneous integration and monolithic integration are combined on a single silicon substrate."
('193 Patent, col. 8, ll. 30–42) (Tab Q, AIE-0374)
These passages make clear that the specification describes embodiments in which heterogeneous integration is employed on the same silicon substrate as monolithic components, and that the specification treats such configurations as falling within the scope of "integrated on a silicon substrate."
Specification Excerpts — "Coherent Detection Module"
The specification of the '193 Patent provides the following relevant disclosures regarding the term "coherent detection module":
"The coherent detection module 550 is a key component of the receiver module and is configured to perform coherent detection of the modulated optical signals received from the optical fiber. As used herein, the term 'coherent detection module' refers to an integrated photonic subsystem that performs coherent mixing of a received optical signal with a local oscillator signal to extract the amplitude and phase information encoded in the received signal. The coherent detection module may operate in either an intradyne configuration (in which the local oscillator frequency is approximately equal to the signal frequency, with any residual frequency offset corrected by digital signal processing) or a homodyne configuration (in which the local oscillator frequency is locked to the signal frequency using an optical phase-locked loop)."
('193 Patent, col. 11, ll. 5–19) (Tab Q, AIE-0386)
"Referring to FIG. 8A, the coherent detection module 550 is shown in a first embodiment comprising a 90-degree optical hybrid 810, four balanced photodetector pairs 820a–820d, and a transimpedance amplifier array 830. The 90-degree optical hybrid 810 receives the signal light and local oscillator light and produces four output signals representing the in-phase (I) and quadrature (Q) components of the two orthogonal polarization states. This configuration enables dual-polarization coherent detection with high spectral efficiency."
('193 Patent, col. 11, ll. 45–55) (Tab Q, AIE-0388)
"Referring to FIG. 8D, in an alternative embodiment, the coherent detection module 550' comprises a simplified single-polarization coherent detection architecture in which a single 90-degree optical hybrid and two balanced photodetector pairs are used to detect a single polarization state. This simplified architecture may be suitable for applications where dual-polarization detection is not required."
('193 Patent, col. 12, ll. 18–26) (Tab Q, AIE-0391)
These specification passages demonstrate that the "coherent detection module" is described in multiple embodiments and is not limited to any single architecture. The narrowing amendment made during prosecution (discussed in Section II.C.4 below) must be considered in determining the scope of this term.
Drawings.  The following drawings of the '193 Patent are included at Tab S (AIE-0423–0448):
•  Figure 1: Block diagram of the high-bandwidth coherent optical transceiver showing transmitter module, receiver module, and silicon photonic transceiver interface.
•  Figure 2: Cross-section of the SOI substrate showing the layer stack used for monolithic integration of the optical components.
•  Figure 3: Plan view of the coherent transmitter showing Mach-Zehnder modulator array and waveguide routing.
•  Figure 5: Plan view of the heterogeneously integrated transceiver showing III-V laser sources bonded to the SOI substrate.
•  Figures 8A–8D: Four embodiments of the coherent detection module: (8A) dual-polarization intradyne with 90-degree hybrid; (8B) dual-polarization with germanium-on-silicon photodetectors; (8C) homodyne architecture with optical phase-locked loop; (8D) single-polarization simplified architecture.
•  Figure 11: Performance chart showing bit error rate versus received optical power for the coherent transceiver.
Section II.C: Prosecution History of the '193 Patent
II.C.1: Provisional Application No. 62/499,117
Tab T (AIE-0449–0488)
Provisional Application No. 62/499,117 was filed on April 7, 2017. This provisional application is the common priority document for both the '193 Patent and the '015 Patent. The provisional application is included at Tab T and is cross-referenced at Tab WW for its relevance to the '015 Patent.
The provisional application discloses the core concepts of both the coherent optical transceiver (which became the subject of the '193 Patent) and the polarization-diverse grating coupler (which became the subject of the '015 Patent). Relevant to the construction of disputed terms in the '193 Patent, the provisional application contains the following disclosures:
•  Description of a coherent optical transceiver "integrated on a silicon substrate" using multiple integration approaches, including monolithic CMOS-compatible fabrication and heterogeneous integration of III-V gain materials. (Prov. App., pp. 12–18.) (Tab T, AIE-0462–0468.)
•  Description of a "coherent detection module" configured for intradyne coherent detection, including a 90-degree optical hybrid and balanced photodetectors. The provisional application describes the coherent detection module in terms that are consistent with the non-provisional application and the issued '193 Patent. (Prov. App., pp. 24–30.) (Tab T, AIE-0474–0480.)
•  Description of a "polarization-diverse grating coupler" for coupling light between an optical fiber and the silicon photonic transceiver. (Prov. App., pp. 35–42.) (Tab T, AIE-0485–0488.) This disclosure is more fully addressed in Part IV of this Appendix in connection with the '015 Patent.
II.C.2: Non-Provisional Application as Filed
Tab U (AIE-0489–0530)
The non-provisional application that matured into the '193 Patent was filed on April 6, 2018, as U.S. Application No. 15/946,782, claiming the benefit of Provisional Application No. 62/499,117 under 35 U.S.C. § 119(e). The application as filed contained twenty-six (26) original claims, including three independent claims. The original claims included the terms "integrated on a silicon substrate" and "coherent detection module" in their original form.
The original text of Claim 3 as filed read:
"The transceiver of claim 1, wherein the receiver module further comprises a coherent detection module configured to perform coherent detection of the plurality of modulated optical signals using a local oscillator."
(Original Claim 3, Application as Filed) (Tab U, AIE-0508)
As discussed in Section II.C.4 below, the term "coherent detection module" in Claim 3 was subsequently amended during prosecution to add the limitation "intradyne" and the requirement that the local oscillator laser be "integrated on the silicon substrate." This narrowing amendment is central to the parties' prosecution history estoppel dispute.
II.C.3: First Office Action
Tab V (AIE-0531–0558)
The first Office Action in the prosecution of the '193 Patent was mailed on November 15, 2018 by Examiner David Lam (Art Unit 2883). The Examiner rejected Claims 1–9 and 18–24 under 35 U.S.C. § 102(a)(1) as being anticipated by Takahashi et al., "Dense WDM Silicon Photonic MUX," IEEE Photonics Technology Letters, vol. 26, no. 5, pp. 473–476 (March 2014) ("Takahashi"). The Examiner also rejected Claims 10–17 under 35 U.S.C. § 103 as being unpatentable over Takahashi in view of U.S. Patent Application Pub