UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
JOINT CLAIM CONSTRUCTION STATEMENT
Filed: October 28, 2024
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I. INTRODUCTION
This Joint Claim Construction Statement is filed by Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") and Defendant Lumicore Technologies, Inc. ("Lumicore" or "Defendant") (collectively, the "Parties") pursuant to the Court's Scheduling Order (Dkt. No. 27, entered August 12, 2024) and the Patent Rules for the Eastern District of Texas. The Parties submit this Statement in accordance with Patent Rule 4-3 and the Court's standing orders governing patent cases.
The Parties identify herein: (a) the patents at issue in this litigation; (b) the asserted claims of each patent; (c) the claim terms for which the Parties have reached agreement on construction; (d) the claim terms that remain in dispute and each Party's proposed construction thereof, together with a brief identification of the basis for each dispute; and (e) a summary identification of the intrinsic and extrinsic evidence each Party intends to rely upon in its forthcoming claim construction briefing.
The Markman hearing in this matter is currently scheduled for March 14, 2025, before the Honorable James R. Gilstrap, United States District Judge for the Eastern District of Texas.
Plaintiff OWS is represented in this action by the following counsel:
Calderwood & Harkness LLP Alan Ngo (CA Bar No. 287412; admitted pro hac vice) Marcus Delgado (TX Bar No. 24098731) Wendy Schultz (CA Bar No. 301894; admitted pro hac vice) Omar Siddiqui (CA Bar No. 314507; admitted pro hac vice) 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 Telephone: (213) 555-7800 Facsimile: (213) 555-7801
Whitmore & Callahan LLP (Local Counsel) James "Jim" Callahan (TX Bar No. 03741826) 110 North College Avenue, Suite 800 Tyler, TX 75702 Telephone: (903) 555-4100 Facsimile: (903) 555-4101
Defendant Lumicore is represented in this action by the following counsel:
Hawthorne Vega & Cruz LLP Catherine "Kate" Rourke (TX Bar No. 24087643) Darren Cho (TX Bar No. 24102389) Samantha Briggs (TX Bar No. 24115674) Rohan Iyer (TX Bar No. 24121098) 600 Congress Avenue, Suite 2400 Austin, TX 78701 Telephone: (512) 555-3200 Facsimile: (512) 555-3201
Trask Eddington LLP (Local Counsel) Maria Garza (TX Bar No. 07894231) 425 East Front Street, Suite 300 Tyler, TX 75701 Telephone: (903) 555-6500 Facsimile: (903) 555-6501
The Parties' respective claim construction positions are set forth in detail below. Nothing in this Joint Claim Construction Statement shall constitute a waiver of any Party's rights, claims, or defenses, whether or not expressly reserved herein.
II. THE ASSERTED PATENTS
The following four (4) United States patents are at issue in this litigation. Each patent is owned by Plaintiff OWS and is asserted against one or more of Defendant Lumicore's accused products.
A. U.S. Patent No. 10,234,847 (the "'847 Patent")
B. U.S. Patent No. 10,891,193 (the "'193 Patent")
C. U.S. Patent No. 9,678,562 (the "'562 Patent")
D. U.S. Patent No. 11,402,015 (the "'015 Patent")
III. THE ASSERTED CLAIMS
The following claims of the asserted patents are at issue in this litigation. For each patent, the Parties identify the specific claims asserted by Plaintiff, the accused products against which such claims are asserted, and any claims for which Plaintiff asserts infringement under the doctrine of equivalents in addition to literal infringement.
A. U.S. Patent No. 10,234,847 (the "'847 Patent")
Asserted Claims: Claims 1, 3, 5, 9, and 14.
Accused Products: The LumiLink 400G-ZR+ transceiver module and the LumiLink 800G-DR8 transceiver module manufactured, sold, offered for sale, and/or imported by Defendant Lumicore Technologies, Inc.
Plaintiff asserts literal infringement of each of Claims 1, 3, 5, 9, and 14 of the '847 Patent by the accused products identified above. Claim 1 is an independent claim, and Claims 3, 5, 9, and 14 are dependent claims. Claim 9 is an independent claim in means-plus-function format. Claim 14 is a dependent claim depending from Claim 9.
B. U.S. Patent No. 10,891,193 (the "'193 Patent")
Asserted Claims: Claims 1, 3, 7, 10, 15, and 18.
Accused Products: The LumiLink 400G-ZR+ transceiver module, the LumiLink 800G-DR8 transceiver module, and the LumiEdge 1600G-LR transceiver module manufactured, sold, offered for sale, and/or imported by Defendant Lumicore Technologies, Inc.
Plaintiff asserts literal infringement of each of Claims 1, 3, 7, 10, 15, and 18 of the '193 Patent by the accused products identified above. In addition, Plaintiff asserts infringement of Claims 3 and 7 under the doctrine of equivalents.
C. U.S. Patent No. 9,678,562 (the "'562 Patent")
Asserted Claims: Claims 1, 4, 6, and 11.
Accused Products: The LumiLink 400G-ZR+ transceiver module and the LumiLink 800G-DR8 transceiver module manufactured, sold, offered for sale, and/or imported by Defendant Lumicore Technologies, Inc.
Plaintiff asserts literal infringement of each of Claims 1, 4, 6, and 11 of the '562 Patent by the accused products identified above.
D. U.S. Patent No. 11,402,015 (the "'015 Patent")
Asserted Claims: Claims 1, 5, 8, 12, and 16.
Accused Products: The LumiLink 800G-DR8 transceiver module and the LumiEdge 1600G-LR transceiver module manufactured, sold, offered for sale, and/or imported by Defendant Lumicore Technologies, Inc.
Plaintiff asserts literal infringement of each of Claims 1, 5, 8, 12, and 16 of the '015 Patent by the accused products identified above. In addition, Plaintiff asserts infringement of Claim 12 under the doctrine of equivalents.
IV. THE ACCUSED PRODUCTS
The following table identifies the accused products in this litigation, together with the patents asserted against each accused product.
Each of the foregoing accused products is a silicon photonic transceiver module designed and sold by Defendant Lumicore Technologies, Inc. for use in data center interconnect and telecommunications applications. Plaintiff's Infringement Contentions (served September 6, 2024, Dkt. No. 34) identify the specific claim elements met by each accused product on a claim-by-claim and limitation-by-limitation basis. Defendant served its Invalidity Contentions and Non-Infringement Contentions on October 4, 2024 (Dkt. No. 41).
V. AGREED CLAIM CONSTRUCTIONS
The Parties have met and conferred and have reached agreement on the construction of the following two (2) claim terms. The Parties respectfully request that the Court adopt the agreed constructions set forth below.
Term 1: "optical signal"
This term appears across multiple asserted claims of both the '847 Patent and the '193 Patent. The Parties agree that the term "optical signal" should receive its plain and ordinary meaning as understood by a person of ordinary skill in the art, and that the agreed construction set forth above is consistent with both the intrinsic record and the ordinary understanding of the term in the field of silicon photonics and optical communications. The Parties further agree that the term is not limited to any particular modulation format, data rate, or wavelength within the identified spectrum.
Term 2: "silicon substrate"
This term appears in multiple asserted claims of both the '193 Patent and the '015 Patent. The Parties agree that "silicon substrate" refers to a wafer or die composed primarily of crystalline silicon and that the term encompasses silicon-on-insulator (SOI) substrates, bulk silicon substrates, and similar silicon-based substrates used in semiconductor fabrication.
Important Note Regarding Disputed Term 2: Although the Parties agree on the construction of "silicon substrate" standing alone, the phrase "integrated on a silicon substrate" (which includes the agreed-upon term "silicon substrate") remains in dispute as Disputed Term 2, set forth in Section VI below. The Parties' agreement on the meaning of "silicon substrate" does not resolve the dispute over the meaning of "integrated on a silicon substrate," which centers on the scope of the word "integrated" as it modifies the relationship between the photonic components and the silicon substrate.
VI. DISPUTED CLAIM TERMS
The Parties have been unable to reach agreement on the construction of the following twelve (12) claim terms, notwithstanding the good-faith meet-and-confer efforts described in Section XI below. For each disputed term, the chart below identifies: (a) the claim term at issue; (b) the patent(s) and claim(s) in which the term appears; (c) Plaintiff's proposed construction; (d) Defendant's proposed construction; and (e) a brief identification of the basis for the dispute.
The Parties will address each of these disputed terms in their respective claim construction briefs in accordance with the briefing schedule set forth in Section VII below.
Disputed Term 1: "waveguide multiplexer"
Basis for Dispute: The Parties disagree on the scope of the term "waveguide multiplexer" as used in the '847 Patent. Plaintiff OWS contends that the term is broad and encompasses any waveguide-based multiplexing architecture, including but not limited to arrayed waveguide gratings (AWGs), echelle gratings, ring-resonator-based multiplexers, and Mach-Zehnder interferometer-based multiplexers. Plaintiff argues that the claim language itself does not recite any specific multiplexer architecture and that the term should be given its full scope as understood by a person of ordinary skill in the art.
Defendant Lumicore contends that the specification and prosecution history of the '847 Patent limit the term "waveguide multiplexer" to a specific arrayed waveguide grating (AWG) architecture employing a slab coupler and a phase-shifted waveguide array. Defendant argues that the AWG is the only multiplexer architecture described in the '847 Patent specification and that the named inventors distinguished prior art during prosecution of the '847 Patent on the basis of the specific AWG architecture claimed, thereby narrowing the scope of "waveguide multiplexer" to that architecture. Defendant further contends that certain statements in the specification constitute a clear and unmistakable disavowal of multiplexer architectures other than AWGs.
Disputed Term 2: "integrated on a silicon substrate"
Basis for Dispute: The Parties disagree on whether the term "integrated on a silicon substrate" is limited to monolithic integration or encompasses hybrid and heterogeneous integration techniques. Plaintiff OWS contends that the term encompasses any semiconductor fabrication method for forming photonic components on silicon, including both monolithic integration and hybrid or heterogeneous integration techniques such as wafer bonding, flip-chip bonding, and III-V-on-silicon integration. Plaintiff argues that the claim language does not recite or require monolithic fabrication and that the specification acknowledges the existence and utility of multiple integration approaches.
Defendant Lumicore contends that the '193 Patent specification repeatedly emphasizes monolithic integration as a key advantage of the claimed invention and that heterogeneous integration using III-V materials bonded to silicon is excluded from the scope of the claims. Defendant points to specific passages in the specification that describe the invention as eliminating the need for hybrid integration techniques, characterizing such techniques as disadvantageous. Defendant further argues that the prosecution history of the '193 Patent shows that the applicant distinguished prior art that used hybrid integration approaches, and that these distinguishing arguments constitute prosecution history disclaimer limiting the claim scope to monolithic integration.
Disputed Term 3: "micro-channel heat sink"
Basis for Dispute: The Parties disagree on both the structural scope and the functional requirements of the term "micro-channel heat sink." Plaintiff OWS contends that the term broadly covers any heat-sink structure with micro-scale channels, whether using passive conduction, natural convection, forced convection, or active liquid cooling, and that the 1 mm upper bound on hydraulic diameter reflects the well-understood meaning of "micro-channel" in the art of thermal management and microfluidics. Plaintiff argues that the claims do not recite a "closed-loop" system or any specific channel-diameter range, and that importing such limitations from the specification would improperly narrow the claims.
Defendant Lumicore contends that the '562 Patent specification discloses only active liquid-cooling embodiments with a specific channel-diameter range of 10 µm to 200 µm. Defendant argues that the term should be limited to a closed-loop liquid-cooling system with channels having a hydraulic diameter within that specific range, as that is the only described embodiment. Defendant further cites technical dictionaries and published literature in the field of microfluidic thermal management that define "micro-channel" as having a hydraulic diameter within the narrower range of 10 µm to 200 µm, and argues that a person of ordinary skill in the art would understand the term in this narrower sense. Defendant also contends that the specification distinguishes passive thermal management approaches as prior art problems that the invention was designed to overcome, constituting disavowal of passive conduction or convection approaches.
Disputed Term 4: "polarization-diverse grating coupler"
Basis for Dispute: The Parties disagree on whether the term "polarization-diverse grating coupler" is limited to a specific two-dimensional grating architecture or encompasses any grating coupler design capable of handling both polarization states. Plaintiff OWS contends that the term encompasses any grating coupler design that handles both polarization states (transverse electric, or TE, and transverse magnetic, or TM), whether through a single two-dimensional grating, two separate one-dimensional gratings arranged in a polarization-diversity scheme, or other polarization-handling architectures known in the art. Plaintiff argues that the claim language requires only that the grating coupler be "polarization-diverse"—i.e., capable of coupling both polarization states—and does not mandate a specific structural implementation.
Defendant Lumicore contends that both the claim language and the specification of the '015 Patent limit the term to a specific two-dimensional grating architecture that incorporates an integrated polarization-splitting element and simultaneously couples both TE and TM modes. Defendant argues that the specification describes only two-dimensional grating coupler implementations and that the use of the term "polarization-diverse" in context refers specifically to the ability of a two-dimensional grating to handle both polarization states simultaneously, as opposed to sequential or separate coupling approaches using multiple one-dimensional gratings. Defendant further contends that certain specification statements disparaging one-dimensional grating approaches constitute disavowal of those approaches.
Disputed Term 5: "Coherent detection module"
Basis for Dispute: The Parties disagree on the structural specificity required by the term "coherent detection module." Plaintiff OWS contends that the term should be construed broadly to encompass any coherent detection architecture, whether using discrete or integrated components, and that the term describes a functional module—one that performs coherent detection—without mandating any specific internal architecture. Plaintiff argues that the claim language uses the word "module" rather than reciting specific sub-components and that a person of ordinary skill in the art would understand "coherent detection module" to encompass a range coherent receiver implementations.
Defendant Lumicore contends that the '193 Patent specification describes only a fully integrated coherent receiver with specific identified components—a local oscillator laser, a 90-degree optical hybrid, and balanced photodetectors—all fabricated on a single silicon die. Defendant argues that these specific components and their integration on a single die define the "module" as disclosed and claimed. Defendant further argues that the applicant narrowed the scope of the claims during prosecution of the '193 Patent in response to a 35 U.S.C. § 102 rejection over Takahashi et al. (U.S. Patent No. 9,112,608), by amending the claims and arguing that the prior art did not disclose the specific integrated coherent receiver architecture claimed. Defendant contends that this narrowing amendment is relevant both to the construction of "coherent detection module" and to prosecution history estoppel under Festo Corp. v. Fenmore & Co., 535 U.S. 722 (2002), for Plaintiff's doctrine of equivalents contentions as to Claims 3 and 7 of the '193 Patent.
Disputed Term 6: "low insertion loss"
Basis for Dispute: The Parties disagree on whether "low insertion loss" imposes a specific numerical limitation or is a relative term. Plaintiff OWS argues that "low insertion loss" is a relative, qualitative term that should be understood in the context of the specification and the state of the art at the time of the invention. Plaintiff contends that the term does not impose a specific numerical limit and that it would be improper to import a specific decibel value from a preferred embodiment into the claim language. Plaintiff argues that a person of ordinary skill in the art would understand "low insertion loss" as a performance goal that may vary depending on the specific application, wavelength, channel count, and other design parameters.
Defendant Lumicore argues that the '847 Patent specification provides a clear numerical benchmark for "low insertion loss," repeatedly referencing performance of less than 1.5 dB per channel as the achieved insertion loss of the claimed multiplexer design. Defendant contends that a person of ordinary skill in the art ("POSITA") would understand the term "low insertion loss" as used in the '847 Patent to require meeting that specific benchmark. Defendant further argues that without a numerical limit, the term "low insertion loss" would be indefinite under 35 U.S.C. § 112(b), as it would provide no objective boundary for determining infringement. Defendant reserves its right to raise indefiniteness as an alternative argument if the Court declines to adopt a numerical construction.
Disputed Term 7: "two-dimensional sub-wavelength grating"
Basis for Dispute: The Parties disagree on whether the term "two-dimensional sub-wavelength grating" should be limited to a specific duty-cycle range. Plaintiff OWS contends that the claim language defines the grating by its dimensionality (two-dimensional) and its feature size relative to the operating wavelength (sub-wavelength) and that neither the claim language nor a proper construction should include a duty-cycle limitation not expressly recited in the claim. Plaintiff argues that the specification discloses the 30%–70% duty-cycle range as a preferred embodiment and that importing this range into the claim construction would improperly narrow the claim.
Defendant Lumicore argues that the '015 Patent specification defines the two-dimensional sub-wavelength grating with specificity, including a duty-cycle range of 30% to 70%, and that a person of ordinary skill in the art would understand the term to encompass this structural parameter as an inherent part of the claimed grating structure. Defendant further argues that a narrowing amendment was made during prosecution of the '015 Patent to overcome a 35 U.S.C. § 103 obviousness rejection combining the Bergmann patent (U.S. Patent No. 8,412,007) with the Simonsen PCT application (PCT/EP2015/071234). Defendant contends that the applicant relied on the specific duty-cycle range to distinguish the claimed grating from the prior art combinations. Defendant argues that this narrowing amendment is relevant to prosecution history estoppel under Festo for Plaintiff's doctrine of equivalents contentions as to Claim 12 of the '015 Patent.
Disputed Term 8: "embedded within the photonic integrated circuit"
Basis for Dispute: The Parties disagree on whether the term "embedded within the photonic integrated circuit" requires that the micro-channel heat sink be formed during the semiconductor fabrication process or whether it also encompasses post-fabrication attachment. Plaintiff OWS argues that the term "embedded within" encompasses both structures that are monolithically formed during fabrication and structures that are attached or bonded to the photonic integrated circuit die or package in a post-fabrication step, provided that the resulting structure is "within" (i.e., contained by or intimately associated with) the photonic integrated circuit. Plaintiff contends that the claim language uses the word "embedded" to describe the spatial relationship between the heat sink and the photonic integrated circuit, not to specify a particular fabrication method.
Defendant Lumicore argues that the '562 Patent specification distinguishes the claimed invention from prior art by repeatedly emphasizing that the micro-channels are formed during the semiconductor fabrication process itself, rather than being added or bonded after fabrication. Defendant contends that this emphasis constitutes disavowal of post-fabrication attachment approaches and that the word "embedded" connotes integral formation during fabrication. Defendant further argues that the specification describes post-fabrication thermal management solutions (such as externally attached heat sinks) as prior art deficiencies that the claimed invention was specifically designed to overcome.
Disputed Term 9: "plurality of wavelength channels"
Basis for Dispute: The Parties disagree on both the minimum number of channels required by "plurality" and whether the channels must conform to a specific industry standard. Plaintiff OWS contends that "plurality" has its well-established ordinary meaning of "two or more" and that the claims of the '847 Patent do not require conformance to any specific industry standard grid, including the International Telecommunication Union (ITU-T) dense wavelength division multiplexing (DWDM) grid. Plaintiff argues that the dependent claims of the '847 Patent, including Claims 3 and 5, add further limitations regarding channel count and spacing, and that under the doctrine of claim differentiation, independent Claim 1 should not be construed to require the additional specificity recited in those dependent claims.
Defendant Lumicore contends that the '847 Patent specification exclusively describes embodiments with four or more channels using DWDM on ITU-T grids (e.g., 100 GHz or 50 GHz channel spacing) and that a person of ordinary skill in the art would understand the term "plurality of wavelength channels" as used in the context of the '847 Patent to require adherence to such standards. Defendant argues that the specification does not describe or contemplate two-channel or three-channel embodiments and that all disclosed embodiments involve four, eight, sixteen, or more channels on an ITU-T grid. Defendant further argues that the claim differentiation doctrine does not override clear specification disclosures and prosecution history.
Disputed Term 10: "means for coupling light from an optical fiber to the waveguide multiplexer"
Basis for Dispute: The Parties disagree on two levels. First, the Parties dispute whether 35 U.S.C. § 112(f) applies to this claim limitation. The term uses the word "means for," which creates a rebuttable presumption that § 112(f) is invoked. See Ostrander Holdings, 792 F.3d 1339 (Fed. Cir. 2015) (en banc). Plaintiff argues this presumption is overcome because the claim language as a whole recites sufficient structure. Defendant argues the presumption is not rebutted.
Second, if § 112(f) applies, the Parties disagree on the scope of the corresponding structure disclosed in the specification. Plaintiff contends that the '847 Patent specification identifies multiple coupling structures, including both edge couplers and grating couplers, as structures capable of performing the recited function, and that structural equivalents of both should be included. Defendant contends that only the edge coupler with a tapered waveguide tip is described with sufficient structural detail in the specification to qualify as corresponding structure and that the grating coupler is mentioned only in passing without the requisite specificity. Defendant further argues that no structural equivalents should be included beyond the specifically disclosed edge coupler structure.
Disputed Term 11: "means for digitally processing the detected optical signal"
Basis for Dispute: As with Disputed Term 10, the Parties disagree on whether 35 U.S.C. § 112(f) applies and, if so, on the breadth of the corresponding structure and algorithms. The use of the word "means for" creates a presumption that § 112(f) is invoked. Plaintiff argues this presumption is overcome because a person of ordinary skill in the art would understand "digitally processing the detected optical signal" to connote specific structural implementations, including DSP processors and their associated algorithms. Defendant argues the presumption is not rebutted.
If § 112(f) applies, the Parties further disagree on the scope of corresponding structure. Plaintiff contends that the '193 Patent specification describes multiple DSP implementations and algorithmic approaches, including general-purpose DSPs as well as application-specific integrated circuits (ASICs), and that the corresponding structure should encompass any DSP implementing FEC, equalization, and carrier recovery algorithms, together with structural equivalents. Defendant contends that the specification limits the corresponding structure to a specific ASIC-based DSP implementation with a narrow set of algorithmic steps: chromatic dispersion compensation, polarization demultiplexing, and carrier phase estimation. Defendant argues that only this specific ASIC implementation and its specific algorithmic steps are described with sufficient detail to serve as corresponding structure, and that no broader structural equivalents should be recognized.
Disputed Term 12: "thermally conductive fluid"
Basis for Dispute: The Parties disagree on the type of fluids encompassed by the term "thermally conductive fluid." Plaintiff OWS argues that the term on its face is not limited to any particular type of fluid and that both liquids and gases are fluids capable of transferring thermal energy. Plaintiff contends that the claim language does not exclude gases or electrically conductive fluids and that a person of ordinary skill in the art would understand "thermally conductive fluid" to encompass any fluid medium with thermal conductivity properties, without regard to whether the fluid is a liquid or gas, or whether it is electrically conductive or dielectric.
Defendant Lumicore argues that the '562 Patent specification only discloses dielectric liquid coolants (specifically, fluorinated dielectric fluids) as the "thermally conductive fluid" and that the specification excludes two categories of fluids: (1) gases, which the specification describes as inadequate for the thermal management requirements of photonic integrated circuits due to their low thermal conductivity; and (2) electrically conductive fluids, which the specification describes as potentially damaging to the photonic integrated circuit due to the risk of electrical shorts. Defendant further argues that the specification provides a minimum thermal conductivity threshold of 0.1 W/m·K, below which the fluid would be insufficient for the described thermal management function, and that this threshold should be incorporated into the claim construction. Defendant contends that these specification disclosures constitute disavowal of gases and electrically conductive fluids.
VII. CLAIM CONSTRUCTION BRIEFING SCHEDULE
Pursuant to the Court's Scheduling Order (Dkt. No. 27, entered August 12, 2024), the following claim construction briefing schedule governs this case:
The Parties understand that the Court may modify the foregoing schedule upon motion or sua sponte. The Parties further understand that claim construction briefs shall comply with the page limitations set forth in the Court's Patent Rules and standing orders, and that any request to exceed those page limits must be made by motion filed at least seven (7) days before the applicable briefing deadline.
VIII. IDENTIFICATION OF INTRINSIC AND EXTRINSIC EVIDENCE
In accordance with the Court's Patent Rules, the Parties identify below the categories of intrinsic and extrinsic evidence that each Party anticipates relying upon in its claim construction briefing. The identification of evidence below is not exhaustive, and each Party reserves the right to supplement its evidence in accordance with the Court's rules and orders.
A. Plaintiff's Anticipated Evidence
1. Intrinsic Evidence
Plaintiff OWS anticipates relying on the following intrinsic evidence in support of its proposed claim constructions:
(a) The claims, specification (including all figures and drawings), and abstracts of each of the four asserted patents: U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015.
(b) The complete prosecution histories of each of the four asserted patents, including all office actions, applicant responses, claim amendments, arguments, declarations submitted under 37 C.F.R. § 1.132, examiner interview summaries, notices of allowance, and all other documents and correspondence in the file histories maintained by the United States Patent and Trademark Office.
(c) The prosecution history of U.S. Provisional Application No. 62/499,117, filed April 7, 2017, to which the '193 Patent and the '015 Patent both claim priority.
(d) The prosecution histories of related patents and applications within the same patent families as the asserted patents, including the continuation relationship between the '562 Patent and the '847 Patent, and all parent, continuation, continuation-in-part, and divisional applications related to the asserted patents.
(e) Any certificates of correction, reexamination certificates, or other post-issuance modifications to the asserted patents.
2. Extrinsic Evidence
Plaintiff OWS anticipates relying on the following extrinsic evidence in support of its proposed claim constructions:
(a) A declaration of Dr. Caroline Ashford, Professor of Electrical Engineering and Photonics at the Northfield Institute of Technology, who will serve as Plaintiff's technical expert on claim construction. Dr. Ashford is expected to offer opinions regarding the understanding of a person of ordinary skill in the art as to the meaning of the disputed claim terms, as well as background information regarding the relevant technology.
(b) A declaration of Dr. Jian-Wei Huang, Chief Technology Officer of Optiwave Semiconductor Corp. and a named inventor on three of the four asserted patents (the '847 Patent, the '193 Patent, and the '015 Patent). Dr. Huang is expected to provide testimony regarding the state of the art at the time of the inventions and the context in which the patent applications were drafted.
(c) Technical dictionaries and glossaries relevant to the fields of silicon photonics, optical communications, photonic integrated circuits, and semiconductor fabrication, including but not limited to: Sterling Reach Industries Dictionary of Scientific and Technical Terms (7th ed.); Handbook of Silicon Photonics (Vivien & Pavesi, eds., Aldermere Partners LLC, 2013); and Fiber-Optic Communication Systems (G.P. Agrawal, Cobalt Ridge & Co., 5th ed., 2021).
(d) IEEE standards and specifications relevant to the asserted patents and the accused products, including IEEE 802.3 standards for Ethernet optical transceiver modules (e.g., IEEE 802.3bs, IEEE 802.3cm, and IEEE 802.3cu).
(e) Textbooks on silicon photonics, waveguide design, photonic integrated circuit fabrication, coherent optical communication, and thermal management of semiconductor devices, including but not limited to: Silicon Photonics Design (L. Chrostowski & M. Hochberg, Cambridge Univ. Press, 2015); Photonic Integrated Circuits (B. Jalali & S. Fathpour, Cobalt Ridge & Co., 2010); and Optical Fiber Telecommunications (I.P. Kaminow, T. Li & A.E. Willner, eds., Academic Press, 6th ed., 2013).
(f) Published technical journal articles and conference papers in the field of silicon photonics, including publications from the IEEE Journal of Lightwave Technology, Optics Express, Optics Letters, and conference proceedings from the Optical Fiber Communication Conference (OFC), the European Conference on Optical Communication (ECOC), and the Conference on Lasers and Electro-Optics (CLEO).
B. Defendant's Anticipated Evidence
1. Intrinsic Evidence
Defendant Lumicore anticipates relying on the following intrinsic evidence in support of its proposed claim constructions:
(a) The claims, specification (including all figures and drawings), and abstracts of each of the four asserted patents: U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015. Defendant notes that the intrinsic evidence of the asserted patents is common to both Parties.
(b) The complete prosecution histories of each of the four asserted patents, including all office actions, applicant responses, claim amendments, arguments, declarations, examiner interview summaries, notices of allowance, and all other documents in the file histories.
(c) Defendant specifically identifies the following prosecution history events as particularly relevant to the disputed claim terms:
(i) The amendment to claims containing the term "coherent detection module" in the prosecution history of the '193 Patent, made in response to a 35 U.S.C. § 102(a)(1) rejection over Takahashi et al. (U.S. Patent No. 9,112,608). This amendment narrowed the scope of the claims and is relevant to both the construction of Disputed Term 5 and prosecution history estoppel for Plaintiff's doctrine of equivalents contentions as to Claims 3 and 7 of the '193 Patent.
(ii) The amendment to claims containing the term "two-dimensional sub-wavelength grating" in the prosecution history of the '015 Patent, made in response to a 35 U.S.C. § 103 obviousness rejection combining the Bergmann patent (U.S. Patent No. 8,412,007) with the Simonsen PCT application (PCT/EP2015/071234). This amendment narrowed the scope of the claims and is relevant to both the construction of Disputed Term 7 and prosecution history estoppel for Plaintiff's doctrine of equivalents contentions as to Claim 12 of the '015 Patent.
(d) The prosecution histories of related patents and applications within the same patent families as the asserted patents, including the continuation relationship between the '562 Patent and the '847 Patent.
2. Extrinsic Evidence
Defendant Lumicore anticipates relying on the following extrinsic evidence in support of its proposed claim constructions:
(a) A declaration of Dr. Rajesh Sundaram, Professor of Electrical and Computer Engineering at Pacific Western University, who will serve as Defendant's technical expert on both claim construction and validity. Dr. Sundaram is expected to offer opinions regarding the understanding of a person of ordinary skill in the art as to the meaning of the disputed claim terms, as well as opinions regarding the scope and meaning of the prior art.
(b) Technical dictionaries and glossaries in the field of silicon photonics, optical communications, microfluidic thermal management, and semiconductor fabrication, including but not limited to the same general reference works identified by Plaintiff and additional specialized references as appropriate.
(c) Prior art references cited during prosecution of the asserted patents, including but not limited to Takahashi et al. (U.S. Patent No. 9,112,608), Bergmann (U.S. Patent No. 8,412,007), and Simonsen (PCT/EP2015/071234), as well as other prior art references identified in Defendant's Invalidity Contentions.
(d) Published academic literature and industry standards relevant to the disputed claim terms, including publications from the IEEE, OSA (Optica), SPIE, and relevant ITU-T recommendations (e.g., ITU-T G.694.1 for DWDM channel spacing).
IX. IDENTIFICATION OF POTENTIALLY APPLICABLE CLAIM CONSTRUCTION DOCTRINES
The Parties identify the following legal doctrines as potentially applicable to the construction of the disputed claim terms identified in Section VI above. The identification of these doctrines is not exhaustive, and each Party reserves the right to raise additional legal arguments and doctrines in its claim construction briefing.
A. Means-Plus-Function (35 U.S.C. § 112(f))
Disputed Terms 10 and 11 raise issues under 35 U.S.C. § 112(f) (formerly § 112, ¶ 6). Both terms use the word "means for" followed by a functional recitation. The Parties dispute whether the use of "means for" in these claim limitations invokes 35 U.S.C. § 112(f), which provides that an element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, and shall be construed to cover the corresponding structure described in the specification and equivalents thereof. The Parties further dispute, if § 112(f) is invoked, the scope of the corresponding structure disclosed in the specification for each of these terms, as set forth in detail in Section VI above. See Ostrander Holdings, 792 F.3d 1339 (Fed. Cir. 2015) (en banc); Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008).
B. Prosecution History Estoppel
The doctrine of prosecution history estoppel is potentially relevant to the construction of Disputed Terms 5 and 7. With respect to Disputed Term 5 ("coherent detection module"), Defendant contends that a narrowing amendment made during prosecution of the '193 Patent to overcome a § 102 rejection over Takahashi et al. limits the scope of the claims and precludes application of the doctrine of equivalents under the Festo presumption. See Festo Corp. v. Fenmore & Co., 535 U.S. 722 (2002). This estoppel argument is relevant to Plaintiff's assertion of infringement of Claims 3 and 7 of the '193 Patent under the doctrine of equivalents.
With respect to Disputed Term 7 ("two-dimensional sub-wavelength grating"), Defendant contends that a narrowing amendment made during prosecution of the '015 Patent to overcome a § 103 rejection combining the Bergmann patent and the Simonsen PCT application limits the scope of the claims and precludes application of the doctrine of equivalents under the Festo presumption. This estoppel argument is relevant to Plaintiff's assertion of infringement of Claim 12 of the '015 Patent under the doctrine of equivalents.
Plaintiff reserves its right to respond to Defendant's prosecution history estoppel arguments in its claim construction briefing and at the Markman hearing.
C. Claim Differentiation
The doctrine of claim differentiation is potentially relevant to the construction of Disputed Terms 1 and 9. With respect to Disputed Term 9 ("plurality of wavelength channels"), Plaintiff contends that the presence of narrower dependent claims in the '847 Patent—including Claims 3 and 5, which add further limitations regarding channel count and channel spacing—confirms that independent Claim 1 should be construed more broadly and should not be limited to "four or more DWDM wavelength channels conforming to an ITU-T grid spacing" as proposed by Defendant.
With respect to Disputed Term 1 ("waveguide multiplexer"), Plaintiff contends that the presence of dependent claims in the '847 Patent that recite specific multiplexer architectures or features (e.g., Claims 3 and 5) confirms that the independent claims should not be limited to a single multiplexer architecture such as an arrayed waveguide grating.
See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (discussing the doctrine of claim differentiation and its presumption that different claims have different scope).
D. Disclaimer / Disavowal
Defendant contends that certain statements in the specifications of the asserted patents constitute clear and unmistakable disavowal of claim scope for the following Disputed Terms:
Disputed Term 2 ("integrated on a silicon substrate"): Defendant contends that specification statements emphasizing the advantages of monolithic integration and disparaging hybrid/heterogeneous integration techniques constitute disavowal of hybrid and heterogeneous integration approaches.
Disputed Term 3 ("micro-channel heat sink"): Defendant contends that specification statements criticizing passive thermal management approaches and describing only active liquid-cooling embodiments constitute disavowal of passive conduction and convection-based heat sinks.
Disputed Term 4 ("polarization-diverse grating coupler"): Defendant contends that specification statements disparaging one-dimensional grating coupler approaches constitute disavowal of one-dimensional grating implementations.
Disputed Term 8 ("embedded within the photonic integrated circuit"): Defendant contends that specification statements distinguishing post-fabrication-attached thermal management structures as prior art deficiencies constitute disavowal of post-fabrication attachment approaches.
Plaintiff disputes each of Defendant's disavowal contentions and reserves its right to respond to these arguments in its claim construction briefing. Plaintiff contends that none of the cited specification statements rises to the level of "clear and unmistakable" disavowal required under Federal Circuit precedent. See Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1366–67 (Fed. Cir. 2012); Westvale Enterprises v. AgiLight, Inc., 750 F.3d 1304, 1311 (Fed. Cir. 2014).
X. RESERVATION OF RIGHTS
A. Plaintiff's Reservation of Rights
Plaintiff OWS expressly reserves the following rights:
1. OWS reserves its rights to assert infringement under the doctrine of equivalents as to Claims 3 and 7 of the '193 Patent and Claim 12 of the '015 Patent, regardless of how the disputed claim terms are construed by the Court. OWS contends that, even if the Court adopts Defendant's proposed construction for any disputed term, the accused products infringe the asserted claims under the doctrine of equivalents because any differences between the claim limitations (as construed) and the corresponding elements of the accused products are insubstantial.
2. OWS reserves the right to supplement its claim construction positions based on evidence obtained during ongoing fact discovery. Fact discovery in this case closes on May 1, 2025, pursuant to the Court's Scheduling Order (Dkt. No. 27). OWS notes that certain discovery remains outstanding, including depositions of Lumicore's engineers and technical witnesses, and that information obtained through such discovery may bear on the proper construction of the disputed claim terms.
3. OWS reserves all rights, claims, and defenses not expressly waived herein, including without limitation all rights under the Parties' respective discovery obligations and the Federal Rules of Civil Procedure.
B. Defendant's Reservation of Rights
Defendant Lumicore expressly reserves the following rights:
1. Lumicore reserves its right to file one or more petitions for inter partes review (IPR) with the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office with respect to any or all of the asserted patents. No IPR petitions have been filed to date. The one-year statutory deadline for filing IPR petitions under 35 U.S.C. § 315(b), running from the date of service of the complaint in this action, is approximately May 1, 2025. Lumicore's decision whether to file IPR petitions remains under consideration and may be informed by the Court's claim construction rulings and other developments in this litigation.
2. Lumicore reserves the right to supplement its invalidity contentions and to seek modification of its claim construction positions based on evidence obtained during ongoing fact and expert discovery. Lumicore notes that expert discovery does not close until August 15, 2025, and that additional evidence bearing on claim construction may come to light during the expert phase of the case.
3. Lumicore reserves all rights, claims, and defenses not expressly waived herein, including without limitation its defenses of non-infringement, invalidity (under 35 U.S.C. §§ 101, 102, 103, and 112), unenforceability, and its counterclaim for declaratory judgment of non-infringement and invalidity.
XI. CERTIFICATION OF MEET AND CONFER
The undersigned counsel for Plaintiff Optiwave Semiconductor Corp. and Defendant Lumicore Technologies, Inc. hereby certify, pursuant to the Court's Patent Rules and Scheduling Order (Dkt. No. 27), that they have met and conferred in good faith in an effort to narrow the number of disputed claim terms and to attempt to reach agreement on the construction of all claim terms identified in the Parties' respective preliminary claim constructions and prior exchanges. The Parties conducted the following meet-and-confer sessions:
(a) An in-person meet-and-confer on September 27, 2024, in Tyler, Texas, attended by lead counsel for both Parties.
(b) A telephonic meet-and-confer on October 8, 2024, attended by lead counsel and technical consultants for both Parties.
(c) A telephonic meet-and-confer on October 17, 2024, attended by lead counsel for both Parties.
(d) An exchange of written correspondence between counsel on October 21–24, 2024, in which the Parties attempted to further narrow the disputed terms.
As a result of these meet-and-confer efforts, the Parties were able to reach agreement on the construction of two (2) claim terms, as set forth in Section V above. Twelve (12) claim terms remain in dispute, as set forth in Section VI above. Despite their good-faith efforts, the Parties were unable to reach agreement on the construction of these twelve terms and respectfully submit their competing proposed constructions for the Court's consideration.
XII. SIGNATURES AND COUNSEL INFORMATION
Respectfully submitted,
For Plaintiff Optiwave Semiconductor Corp.:
CALDERWOOD & HARKNESS LLP
By: ________
Alan Ngo (CA Bar No. 287412; admitted pro hac vice) Marcus Delgado (TX Bar No. 24098731) Wendy Schultz (CA Bar No. 301894; admitted pro hac vice) Omar Siddiqui (CA Bar No. 314507; admitted pro hac vice) 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 Telephone: (213) 555-7800 Facsimile: (213) 555-7801
Email: ango@calderwoodharkness.com
Email: mdelgado@calderwoodharkness.com
Email: wschultz@calderwoodharkness.com
Email: osiddiqui@calderwoodharkness.com
WHITMORE & CALLAHAN LLP
By: ________
James "Jim" Callahan (TX Bar No. 03741826) 110 North College Avenue, Suite 800 Tyler, TX 75702 Telephone: (903) 555-4100 Facsimile: (903) 555-4101
Email: jcallahan@whitmorecallahan.com
Attorneys for Plaintiff Optiwave Semiconductor Corp.
For Defendant Lumicore Technologies, Inc.:
HAWTHORNE VEGA & CRUZ LLP
By: ________
Catherine "Kate" Rourke (TX Bar No. 24087643) Darren Cho (TX Bar No. 24102389) Samantha Briggs (TX Bar No. 24115674) Rohan Iyer (TX Bar No. 24121098) 600 Congress Avenue, Suite 2400 Austin, TX 78701 Telephone: (512) 555-3200 Facsimile: (512) 555-3201
Email: krourke@hvclegal.com
Email: dcho@hvclegal.com
Email: sbriggs@hvclegal.com
Email: riyer@hvclegal.com
TRASK EDDINGTON LLP
By: ________
Maria Garza (TX Bar No. 07894231) 425 East Front Street, Suite 300 Tyler, TX 75701 Telephone: (903) 555-6500 Facsimile: (903) 555-6501
Email: mgarza@traskeddington.com
Attorneys for Defendant Lumicore Technologies, Inc.
XIII. CERTIFICATE OF SERVICE
I hereby certify that on October 28, 2024, a true and correct copy of the foregoing Joint Claim Construction Statement was served on all counsel of record via the Court's CM/ECF electronic filing system, which will send notification of such filing to all registered participants.
By: ________
Alan Ngo CALDERWOOD & HARKNESS LLP 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 Telephone: (213) 555-7800
Email: ango@calderwoodharkness.com
XIV. PROPOSED APPENDICES
The following Appendices will be filed separately or with the Parties' respective claim construction briefs, as directed by the Court.
Appendix A — Asserted Claims in Full Text
Appendix A will contain the full text of each asserted claim of each of the four asserted patents, reproduced verbatim from the patent documents, including all claim dependencies. Specifically, Appendix A will include:
• The full text of Claims 1, 3, 5, 9, and 14 of U.S. Patent No. 10,234,847 (the "'847 Patent"), including the independent claim language and all limitations of the dependent claims.
• The full text of Claims 1, 3, 7, 10, 15, and 18 of U.S. Patent No. 10,891,193 (the "'193 Patent"), including the independent claim language and all limitations of the dependent claims.