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UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

[PROPOSED] ORDER CONSTRUING DISPUTED CLAIM TERMS

Before the Honorable James R. Gilstrap, United States District Judge

Filed by Plaintiff Optiwave Semiconductor Corp.

Submitted by counsel for Plaintiff Optiwave Semiconductor Corp.: Calderwood & Harkness LLP, 350 South Grand Avenue, 48th Floor, Los Angeles, California 90071, and 1201 F Street NW, Suite 700, Washington, DC 20004; and local counsel Whitmore & Callahan LLP, 110 North College Avenue, Suite 800, Tyler, Texas 75702.

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I. INTRODUCTORY RECITALS

WHEREAS, Plaintiff Optiwave Semiconductor Corp. ("OWS") filed the above-captioned action on April 22, 2024, alleging that Defendant Lumicore Technologies, Inc. ("Lumicore") has infringed and continues to infringe four United States utility patents owned by OWS, specifically: U.S. Patent No. 10,234,847 (the "'847 Patent"), entitled "Multi-Channel Low-Loss Waveguide Multiplexer for Silicon Photonic Integrated Circuits"; U.S. Patent No. 10,891,193 (the "'193 Patent"), entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate"; U.S. Patent No. 9,678,562 (the "'562 Patent"), entitled "Embedded Micro-Channel Thermal Management System for Photonic Integrated Circuits"; and U.S. Patent No. 11,402,015 (the "'015 Patent"), entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers" (collectively, the "Asserted Patents"); and

WHEREAS, the Complaint (D.E. 1), as amended by the First Amended Complaint (D.E. 18), identifies the following accused product lines manufactured, sold, offered for sale, imported, and/or used by Lumicore in the United States: the LumiLink 400G-ZR+ coherent optical transceiver module, the LumiLink 800G-DR8 direct-detect optical transceiver module, and the LumiEdge 1600G-LR long-reach coherent transceiver module (collectively, the "Accused Products"), each of which OWS alleges practices one or more claims of the Asserted Patents; and

WHEREAS, OWS is represented in this action by the law firm of Calderwood & Harkness LLP, with Alan Ngo serving as Responsible Partner, Marcus Delgado serving as Billing Partner, Wendy Schultz serving as Lead Associate, and Omar Siddiqui serving as Working Associate, and by local counsel Whitmore & Callahan LLP, with James "Jim" Callahan serving as local counsel of record; and Lumicore is represented in this action by the law firm of Hawthorne Vega & Cruz LLP, with Catherine "Kate" Rourke serving as Lead Partner, Darren Cho serving as Second Chair Partner, Samantha Briggs serving as Lead Associate, and Rohan Iyer serving as Working Associate, and by local counsel Trask Eddington LLP, with Maria Garza serving as local counsel of record; and

WHEREAS, on October 28, 2024, in accordance with the Court's Docket Control Order (D.E. 22) and this Court's Patent Rules, the parties filed a Joint Claim Construction Statement (D.E. 40) identifying fourteen (14) disputed claim terms from the Asserted Patents requiring construction by the Court, of which two (2) terms were subsequently agreed upon by the parties through the meet-and-confer process required by this Court's rules, leaving twelve (12) terms in dispute for resolution by the Court, along with two (2) terms potentially invoking 35 U.S.C. § 112(f); and

WHEREAS, OWS filed its Opening Claim Construction Brief on November 15, 2024 (D.E. 44), which was supported by the Declaration of Dr. Caroline Ashford (D.E. 44-1), Professor of Electrical Engineering & Photonics at Northfield Institute of Technology, who was retained as Plaintiff's technical expert on claim construction and who opined on the understanding of a person of ordinary skill in the art with respect to each disputed term, and was further supported by the Declaration of Dr. Jian-Wei Huang (D.E. 44-2), OWS's Chief Technology Officer and a named inventor on the '847 Patent, the '193 Patent, and the '015 Patent, who provided testimony regarding the context and purpose of the inventions disclosed in the Asserted Patents; and

WHEREAS, Lumicore filed its Responsive Claim Construction Brief on December 6, 2024 (D.E. 48), which was supported by the Declaration of Dr. Rajesh Sundaram (D.E. 48-1), Professor of Electrical & Computer Engineering at Pacific Western University, who was retained as Defendant's technical and validity expert on claim construction and who opined on the understanding of a person of ordinary skill in the art with respect to each disputed term and offered opinions regarding the prosecution histories and prior art relevant to certain of the disputed terms; and

WHEREAS, OWS filed its Reply Claim Construction Brief on December 20, 2024 (D.E. 52), which was supported by the Supplemental Declaration of Dr. Caroline Ashford (D.E. 52-1), responding to and rebutting opinions expressed by Dr. Sundaram in his declaration, addressing specific points regarding the intrinsic evidence, prosecution history, and the understanding of a person of ordinary skill in the art; and

WHEREAS, Lumicore filed its Sur-Reply Claim Construction Brief on January 10, 2025 (D.E. 56), by leave of Court, the Court having granted Lumicore's Motion for Leave to File Sur-Reply (D.E. 54) on January 3, 2025, finding that OWS's Reply Brief raised new arguments that warranted a response from Lumicore in the interest of fairness and completeness of the record; and

WHEREAS, the parties submitted a Final Joint Claim Construction Chart on January 15, 2025 (D.E. 58), consolidating each party's final proposed construction for all fourteen (14) identified terms, together with citations to supporting intrinsic and extrinsic evidence for each proposed construction, as required by the Court's Docket Control Order; and

WHEREAS, in February 2025, the parties submitted claim construction tutorial presentations to the Court, providing technological background and context for the disputed claim terms, including detailed explanations of silicon photonics, waveguide multiplexing techniques, coherent optical transceiver architectures, thermal management in photonic integrated circuits, and polarization-diverse grating couplers, accompanied by demonstrative exhibits, annotated patent figures, and prior-art comparisons designed to assist the Court in understanding the field of the invention; and

WHEREAS, the Court conducted a Markman hearing on March 14, 2025, at which counsel for both parties presented oral argument on the twelve (12) disputed claim terms and the two (2) potential means-plus-function terms, responded to questions from the Court, and addressed the parties' respective positions as set forth in the briefing and supporting declarations; and

WHEREAS, claim construction is a matter of law for the Court, as established by Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), and Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and the words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of the invention, read in the context of the patent specification and prosecution history; and

WHEREAS, the intrinsic record — comprising the claims themselves, the written description and figures of the specification, and the prosecution history — is the primary and most reliable source for claim construction, and extrinsic evidence, including expert testimony, dictionaries, learned treatises, and technical literature, may be considered to assist the Court in understanding the technology and the meaning of terms in the art, but such extrinsic evidence may not be used to contradict the meaning of claim terms as established by the intrinsic record, see Phillips, 415 F.3d at 1317–19; Ridgeway & Co. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996); and

WHEREAS, the Court adopts, for purposes of this litigation, the following definition of a person of ordinary skill in the art ("POSITA") as applicable to the Asserted Patents: a person possessing a Master of Science or Doctor of Philosophy degree in electrical engineering, photonics, optical engineering, or a closely related discipline, and having at least three (3) years of experience in the design, fabrication, testing, or characterization of silicon-photonic integrated circuits, including experience with waveguide-based optical components, coherent transceivers, or related photonic systems, which definition is consistent with the definition proposed by Dr. Caroline Ashford in her Declaration (D.E. 44-1, ¶¶ 18–22) and is substantially similar to the definition proposed by Dr. Rajesh Sundaram (D.E. 48-1, ¶¶ 15–19), the principal difference between the two experts' proposed definitions being Dr. Sundaram's additional requirement of five years of industry experience, which the Court finds unnecessarily restrictive and not reflective of the level of skill in the art at the time of the inventions; and

WHEREAS, with respect to the patent family and priority relationships among the Asserted Patents, the Court notes the following: the '562 Patent was filed on November 22, 2014, and issued on June 13, 2017, and was originally assigned to Solara Optics, Inc., a California corporation; OWS acquired the '562 Patent, along with a portfolio of related patents and patent applications, from Solara Optics, Inc. pursuant to an Asset Purchase Agreement dated June 15, 2018, for a total purchase price of $34.5 million; the '847 Patent was filed on September 14, 2016, and issued on March 19, 2019, and was originally assigned to OWS; the '562 Patent and the '847 Patent are in the same patent family, with the '847 Patent being a continuation of the '562 Patent and claiming priority thereto; the '193 Patent was filed on April 7, 2017, and issued on January 12, 2021, and was assigned to OWS upon issuance; the '015 Patent was filed on August 30, 2019, and issued on August 2, 2022, and was assigned to OWS upon issuance; and the '193 Patent and the '015 Patent share a common provisional application, Provisional Application No. 62/499,117, filed April 7, 2017, from which both non-provisional applications claim priority; and

WHEREAS, all four Asserted Patents were prosecuted before the United States Patent and Trademark Office by the law firm of Cascade IP Advisors, LLC, with Dr. Martin Chu serving as lead prosecution attorney and attorney of record for each application;

II. ORDER

NOW THEREFORE, having carefully considered the parties' Opening, Responsive, Reply, and Sur-Reply Claim Construction Briefs, the Declarations and Supplemental Declaration of Dr. Caroline Ashford submitted on behalf of OWS, the Declaration of Dr. Rajesh Sundaram submitted on behalf of Lumicore, the Declaration of Dr. Jian-Wei Huang submitted on behalf of OWS, the Joint Claim Construction Statement (D.E. 40), the Final Joint Claim Construction Chart (D.E. 58), the claim construction tutorial presentations submitted by both parties, the arguments of counsel presented at the Markman hearing conducted on March 14, 2025, and the complete record of intrinsic and extrinsic evidence before the Court, including the claims, specifications, and prosecution histories of each of the four Asserted Patents, and being fully advised in the premises, the Court hereby ORDERS that the disputed claim terms of the Asserted Patents shall be construed as set forth below.

III. CONSTRUCTIONS OF DISPUTED CLAIM TERMS

A. Term 1: "waveguide multiplexer"

Patent: U.S. Patent No. 10,234,847 (the "'847 Patent")

Claim(s): Claims 1, 3, 5, 9, and 14

OWS's Proposed Construction: "an optical device that combines multiple optical signals of different wavelengths onto a single waveguide"

Lumicore's Proposed Construction: "an arrayed waveguide grating that combines optical signals using a slab coupler and phase-shifted waveguide array"

Court's Construction. The Court adopts OWS's proposed construction. The term "waveguide multiplexer" is construed to mean "an optical device that combines multiple optical signals of different wavelengths onto a single waveguide."

Rationale. The claim language of independent Claim 1 of the '847 Patent recites a "waveguide multiplexer" without limiting the term to any specific type of multiplexing architecture or structural implementation. The claim uses a broad, functional description — multiplexing optical signals via a waveguide-based device — and does not specify the particular physical mechanism or structure by which wavelength combining is achieved.

The '847 Patent specification confirms the breadth of the term. The specification describes multiple embodiments of waveguide multiplexers suitable for use in the claimed invention. At column 4, lines 12–35, the specification describes an arrayed waveguide grating ("AWG") embodiment employing a slab coupler and a phased array of waveguides to achieve wavelength-dependent constructive interference at output ports. At column 5, lines 3–28, the specification describes an alternative embodiment employing a Mach-Zehnder interferometer ("MZI") based multiplexer architecture with cascaded stages. At column 6, lines 15–42, the specification describes yet another embodiment employing an echelle-grating multiplexer, in which a concave diffraction grating etched into a slab waveguide provides wavelength-selective focusing. In each instance, the specification describes the embodiment as a "waveguide multiplexer" falling within the scope of the invention. Confining the term to a single one of these embodiments — the AWG with slab coupler, as Lumicore proposes — would improperly read a preferred embodiment limitation into the claims, in direct contravention of the principle articulated by the Federal Circuit in Phillips, 415 F.3d at 1323 ("[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.").

The prosecution history of the '847 Patent does not reflect any narrowing amendment or disclaimer that would limit the term "waveguide multiplexer" to arrayed waveguide gratings. During prosecution, the examiner issued an Office Action dated February 12, 2018, rejecting Claims 1–14 under 35 U.S.C. § 102(a)(1) over the Tanaka reference (U.S. Patent No. 9,052,448). In response, OWS amended certain dependent claims to add structural limitations distinguishing the claimed invention from Tanaka's disclosed architecture, but the term "waveguide multiplexer" in independent Claim 1 was not amended or narrowed. There is no prosecution history estoppel applicable to this term.

The Declaration of Dr. Caroline Ashford (D.E. 44-1, ¶¶ 35–42) explains that a person of ordinary skill in the art would understand the term "waveguide multiplexer" broadly to encompass any optical device that combines multiple wavelength channels into a single waveguide output, including AWGs, MZI-based multiplexers, echelle-grating multiplexers, and ring-resonator-based multiplexers, among other architectures known in the field. Dr. Ashford's opinion is consistent with the intrinsic evidence and is credited by the Court.

Dr. Sundaram's declaration (D.E. 48-1, ¶¶ 45–53) asserts that a POSITA would understand "waveguide multiplexer" to refer specifically to an AWG, based on his assertion that AWGs were the "dominant" multiplexing architecture in silicon photonics at the time of the invention. However, even if AWGs were the most common architecture, that does not mean the claim term is limited to AWGs, particularly where the specification expressly discloses alternative architectures. Dr. Sundaram's opinion impermissibly seeks to narrow the claim term based on industry prevalence rather than the intrinsic record.

Finally, the principle of claim differentiation supports the broader construction. Dependent Claim 3 of the '847 Patent recites that "the waveguide multiplexer comprises an arrayed waveguide grating," and dependent Claim 5 recites that "the waveguide multiplexer comprises a Mach-Zehnder interferometer-based coupler configuration." The presence of these narrowing dependent claims demonstrates that the patentee intended the independent claim term "waveguide multiplexer" to be broader than any single architecture. If independent Claim 1 were already limited to an AWG, as Lumicore proposes, then dependent Claim 3 would be rendered superfluous, violating the doctrine of claim differentiation. See Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) ("The 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.").

For these reasons, the Court adopts OWS's proposed construction of "waveguide multiplexer."

B. Term 2: "integrated on a silicon substrate"

Patent: U.S. Patent No. 10,891,193 (the "'193 Patent")

Claim(s): Claims 1, 3, 7, 10, 15, and 18

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"

Court's Construction. The Court adopts OWS's proposed construction. The term "integrated on a silicon substrate" is construed to mean "formed on or within a silicon-based wafer using semiconductor fabrication processes."

Rationale. The '193 Patent specification describes integration techniques that encompass both monolithic and hybrid approaches. At column 3, lines 22–45, the specification describes a preferred embodiment in which all photonic components — including modulators, waveguides, photodetectors, and passive optical elements — are monolithically fabricated on a single silicon-on-insulator (SOI) wafer using standard CMOS-compatible processes. However, the specification does not limit the invention to monolithic integration. At column 7, lines 5–30, the specification expressly describes an alternative embodiment employing heterogeneous integration of III-V gain media on a silicon substrate, stating: "In certain embodiments, a III-V semiconductor gain element, such as an InP-based distributed-feedback laser, may be heterogeneously integrated onto the silicon substrate via wafer-level bonding or die-level flip-chip attachment, thereby providing optical gain functionality that is not readily achievable in pure silicon." At column 8, lines 12–28, the specification further describes a hybrid-bonding technique in which pre-fabricated photodetector arrays are bonded to the silicon photonic circuit using micro-bump interconnects.

Lumicore's proposed construction would exclude both the heterogeneous integration embodiment of column 7 and the hybrid-bonding embodiment of column 8, each of which is expressly described in the specification as being within the scope of the invention. The Federal Circuit has consistently held that "a claim construction that excludes a preferred embodiment is rarely, if ever, correct." Ridgeway & Co., 90 F.3d at 1583. Here, Lumicore's construction excludes not merely a preferred embodiment but multiple expressly disclosed embodiments, rendering the construction untenable.

The prosecution history of the '193 Patent, which claims priority to Provisional Application No. 62/499,117, filed April 7, 2017, does not contain any disavowal or narrowing of integration methods. During prosecution, the claims were amended to add the phrase "integrated on a silicon substrate" (Amendment filed July 22, 2020, in response to a § 103 rejection), but the amendment was accompanied by remarks stating that the amendment distinguished the claimed invention from the prior-art reference (Chen et al., U.S. Pub. No. 2016/0054522) based on the requirement of silicon-substrate integration rather than the InP-platform integration taught by Chen. The remarks did not distinguish between monolithic and hybrid integration approaches, and at no point did the applicant disclaim or disavow hybrid integration techniques.

Dr. Ashford's declaration (D.E. 44-1, ¶¶ 55–65) explains that a POSITA would understand the phrase "integrated on a silicon substrate" to cover any semiconductor fabrication process by which components are formed on or within a silicon wafer, including but not limited to monolithic CMOS processes, hybrid bonding, flip-chip bonding, and heterogeneous integration. Dr. Ashford notes that the silicon photonics industry routinely employs hybrid integration techniques and that a POSITA would not understand "integrated on a silicon substrate" to exclude components that are bonded or otherwise attached to a silicon wafer merely because the component material is not itself silicon.

Dr. Sundaram relies on several extrinsic publications, including a trade publication definition from Silicon Photonics Design Handbook (2015 ed.) that defines "monolithic integration" as distinct from "hybrid integration." While this extrinsic evidence accurately describes the distinction between the two integration approaches, it does not support the conclusion that the claim term "integrated on a silicon substrate" is limited to monolithic integration. The extrinsic evidence cannot override the clear intrinsic evidence showing that multiple integration methods — both monolithic and hybrid — are within the scope of the specification. See Phillips, 415 F.3d at 1318 ("Extrinsic evidence is less significant than the intrinsic record in determining the legally operative meaning of claim language.").

For these reasons, the Court adopts OWS's proposed construction.

C. Term 3: "micro-channel heat sink"

Patent: U.S. Patent No. 9,678,562 (the "'562 Patent")

Claim(s): Claims 1, 4, 6, and 11

OWS's Proposed Construction: "a heat-dissipating structure containing channels with a hydraulic diameter of less than 1 mm"

Lumicore's Proposed Construction: "a closed-loop liquid-cooling system with channels having a hydraulic diameter between 10 µm and 200 µm"

Court's Construction. The Court adopts OWS's proposed construction. The term "micro-channel heat sink" is construed to mean "a heat-dissipating structure containing channels with a hydraulic diameter of less than 1 mm."

Rationale. The '562 Patent specification provides a clear lexicographic definition of the term "micro-channel" that the Court is bound to honor. At column 2, lines 38–42, the specification states: "As used herein, the term 'micro-channel' refers to a fluid-carrying channel having a hydraulic diameter generally less than 1 mm." This definitional statement constitutes an express lexicographic definition, and the Court must give the term the meaning assigned by the patentee. See Vitronics, 90 F.3d at 1582 ("A patentee is free to be his or her own lexicographer."); Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).

The specification further describes both open-loop and closed-loop cooling configurations employing micro-channels. At column 5, lines 10–35, the specification describes a preferred embodiment employing a closed-loop pumped-fluid micro-channel heat sink with channels having a hydraulic diameter of approximately 100 µm. At column 6, lines 3–22, the specification describes an alternative embodiment employing an open-loop, capillary-driven two-phase micro-channel heat sink in which a working fluid evaporates within the channels and vapor escapes through micro-porous vents. At column 7, lines 14–38, the specification describes a passive micro-channel heat sink operating without active pumping, relying on natural convection and capillary forces. Across these various embodiments, the specification discloses channels ranging from approximately 50 µm to 500 µm in hydraulic diameter.

Lumicore's proposed construction is deficient in two respects. First, the proposed range of 10 µm to 200 µm in hydraulic diameter is narrower than the range disclosed in the specification (50 µm to 500 µm) and is inconsistent with the express lexicographic definition, which sets the upper boundary at 1 mm. Lumicore's proposed upper limit of 200 µm finds no support in the intrinsic record. Second, Lumicore's requirement of a "closed-loop liquid-cooling system" improperly limits the term to one cooling architecture when the specification expressly describes passive (capillary-driven), active (pumped-fluid), and two-phase micro-channel heat sinks that do not require a closed-loop configuration. The closed-loop limitation has no basis in the claim language, the specification's definitional statement, or the prosecution history.

The prosecution history for the '562 Patent (originally assigned to Solara Optics, Inc., filed November 22, 2014, issued June 13, 2017) does not include any amendment or examiner statement narrowing the claim term to closed-loop systems or to the 10–200 µm range proposed by Lumicore. During prosecution, the examiner allowed the claims after a § 103 rejection was overcome by amending certain claims to add the "embedded" limitation, which is separately construed below. The examiner's Reasons for Allowance (mailed March 20, 2017) do not discuss the "micro-channel heat sink" term in a manner that would support Lumicore's narrowing construction.

The Declaration of Dr. Ashford (D.E. 44-1, ¶¶ 72–85) and the prior-art analysis of Dr. Li Wei's 2013 conference paper, "Thermal Solutions for Photonic Integrated Circuits" (presented at the IEEE Optical Interconnects Conference, May 2013), confirm that the POSITA understanding of "micro-channel" at the time of the '562 Patent filing was channels with a hydraulic diameter below 1 mm, consistent with the express definition in the specification. Dr. Ashford further explains that the field of micro-channel heat sinks encompasses a range architectures, including open-loop, closed-loop, single-phase, and two-phase systems, and that a POSITA would not limit the term to any single configuration absent express claim language requiring such limitation.

For these reasons, the Court adopts OWS's proposed construction.

D. Term 4: "polarization-diverse grating coupler"

Patent: U.S. Patent No. 11,402,015 (the "'015 Patent")

Claim(s): Claims 1, 5, 8, 12, and 16

OWS's Proposed Construction: "a grating coupler capable of coupling light of two orthogonal polarization states"

Lumicore's Proposed Construction: "a two-dimensional grating coupler with a polarization-splitting element that simultaneously couples TE and TM modes"

Court's Construction. The Court adopts OWS's proposed construction. The term "polarization-diverse grating coupler" is construed to mean "a grating coupler capable of coupling light of two orthogonal polarization states."

Rationale. The claim language of independent Claim 1 of the '015 Patent recites a "polarization-diverse grating coupler" without specifying the structural mechanism by which polarization diversity is achieved. The claim uses a functional description — the ability to couple light of two orthogonal polarization states — rather than prescribing a particular structural implementation.

The '015 Patent specification describes at least three distinct embodiments achieving polarization diversity, each of which is described as a "polarization-diverse grating coupler" within the meaning of the invention:

(i) At column 4, lines 25–50, a two-dimensional grating coupler with an integrated polarization-splitting element, in which the grating's two-dimensional periodicity enables simultaneous coupling of both TE and TM polarization modes into separate waveguide outputs;

(ii) At column 5, lines 8–32, a pair of one-dimensional grating couplers arranged in an orthogonal configuration, in which each grating coupler is optimized for one polarization state and the combined structure achieves polarization diversity through spatial arrangement rather than two-dimensional periodicity; and

(iii) At column 6, lines 15–40, a grating coupler used in conjunction with an external polarization beam splitter, in which an off-chip polarization-splitting element separates the two orthogonal polarization components before they are coupled into the chip via separate one-dimensional grating couplers.

Lumicore's proposed construction, which requires a "two-dimensional grating coupler with a polarization-splitting element," encompasses only embodiment (i) and excludes embodiments (ii) and (iii). This improperly narrows the claim to a single embodiment, contrary to the well-established principle that claims are not to be confined to specific disclosed embodiments where the claim language is broader. See Phillips, 415 F.3d at 1323; Ashford Enterprises v. Dunmore Corporation, 358 F.3d 898, 906 (Fed. Cir. 2004).

The prosecution history of the '015 Patent includes a narrowing amendment to Claim 12 that merits discussion. During prosecution, the examiner issued an Office Action dated March 15, 2021, rejecting Claims 1–16 under 35 U.S.C. § 103 as obvious in view of Bergmann (U.S. Patent No. 8,412,007) in combination with Simonsen (PCT/EP2015/071234). In response, OWS filed an amendment on June 14, 2021, amending dependent Claim 12 to add the limitation "two-dimensional sub-wavelength grating," thereby distinguishing the claimed invention from the combination of Bergmann and Simonsen, which did not disclose a sub-wavelength grating period. Critically, the amendment was directed specifically to the "sub-wavelength grating" limitation in Claim 12 and did not amend or narrow the "polarization-diverse grating coupler" term that appears in independent Claim 1. There is no prosecution history estoppel or disclaimer applicable to the "polarization-diverse grating coupler" term based on the Claim 12 amendment.

The principle of claim differentiation further supports the broader construction. Dependent Claim 5 adds the limitation that the polarization-diverse grating coupler "comprises a two-dimensional grating with periodic features in two orthogonal directions," and dependent Claim 8 adds the limitation that the coupler "includes a polarization-splitting element configured to direct TE-mode light to a first waveguide and TM-mode light to a second waveguide." The presence of these narrowing dependent claims demonstrates that the independent claim term "polarization-diverse grating coupler" was intended to be broader than the specific structural requirements recited in the dependent claims. If independent Claim 1 already required a two-dimensional grating coupler with a polarization-splitting element, as Lumicore proposes, then dependent Claims 5 and 8 would add no meaningful limitation, rendering them superfluous.

Dr. Ashford's declaration (D.E. 44-1, ¶¶ 95–108) confirms that a POSITA would understand the term "polarization-diverse grating coupler" functionally — as any grating coupler designed to handle both orthogonal polarization states (TE and TM) — without imposing a structural limitation requiring a two-dimensional grating or a particular polarization-splitting mechanism. The Court credits this opinion as consistent with the intrinsic evidence.

For these reasons, the Court adopts OWS's proposed construction.

E. Term 5: "coherent detection module"

Patent: U.S. Patent No. 10,891,193 (the "'193 Patent")

Claim(s): Claims 3 and 7

OWS's Proposed Construction: "a module configured to detect the amplitude and phase of an optical signal using a local oscillator and optical mixing"

Lumicore's Proposed Construction: "an intradyne or homodyne coherent receiver with a 90-degree optical hybrid and balanced photodetectors monolithically integrated on the silicon substrate"

Court's Construction. The Court adopts OWS's proposed construction. The term "coherent detection module" is construed to mean "a module configured to detect the amplitude and phase of an optical signal using a local oscillator and optical mixing."

Rationale. The claim language recites "coherent detection module" without specifying the particular receiver architecture (intradyne, homodyne, or heterodyne), the specific optical hybrid configuration (90-degree or 120-degree), or the type of photodetectors employed (balanced or single-ended). The term describes a module by its function — coherent detection of amplitude and phase — and its essential components — a local oscillator and optical mixing — without prescribing the detailed internal structure of the module.

The '193 Patent specification describes multiple coherent detection architectures falling within the scope of the invention. At column 8, lines 30–55, the specification describes a preferred embodiment employing an intradyne receiver with a 90-degree optical hybrid and balanced photodetectors. At column 9, lines 5–25, the specification describes an alternative embodiment employing a homodyne receiver with a 120-degree optical hybrid. At column 9, lines 35–50, the specification further describes an embodiment using single-ended photodetectors with digital signal processing ("DSP") algorithms to compensate for the lack of balanced detection. These diverse embodiments confirm that the claim term was not intended to be limited to any single receiver architecture.

During prosecution of the '193 Patent, the examiner issued a § 102 rejection over Takahashi et al. ("Dense WDM Silicon Photonic MUX-DEMUX for communications," IEEE Photonics Technology Letters, Vol. 26, No. 6, March 2014). In response, OWS amended certain claims to distinguish over Takahashi's specific coherent receiver configuration. The amendment narrowed the "coherent detection module" limitation by adding the requirement that the module detect both "amplitude and phase" of the optical signal, which was already described in the specification. The amendment did not add the structural limitations that Lumicore now proposes — namely, a 90-degree optical hybrid, balanced photodetectors, or monolithic integration. The prosecution history thus does not support Lumicore's attempt to import these structural requirements into the claim term.

Moreover, Lumicore's proposed construction introduces a structural requirement — "monolithically integrated on the silicon substrate" — that conflates the "coherent detection module" term with the separately construed phrase "integrated on a silicon substrate" (Term 2, above). If the Court were to adopt Lumicore's construction, the claim would effectively contain two overlapping integration requirements: one from the "coherent detection module" term and one from the "integrated on a silicon substrate" phrase elsewhere in the claim. This double-counting of a limitation is improper and is unsupported by the claim structure, which treats the "coherent detection module" and the "integrated on a silicon substrate" phrase as distinct and independently operative limitations.

Dr. Ashford's declaration (D.E. 44-1, ¶¶ 110–122) confirms that a POSITA would understand "coherent detection module" as any module employing a local oscillator and optical mixing for the detection of amplitude and phase information from an incoming optical signal, without the specific structural constraints Lumicore proposes. Dr. Ashford notes that coherent detection is a well-understood concept in optical communications, and the essential characteristics of a coherent detection module — local oscillator, optical mixing, and amplitude/phase recovery — are universally recognized in the field without being tied to any particular implementation.

For these reasons, the Court adopts OWS's proposed construction.

F. Term 6: "low insertion loss"

Patent: U.S. Patent No. 10,234,847 (the "'847 Patent")

Claim(s): Claims 1, 9, and 14

OWS's Proposed Construction: "insertion loss that is reduced relative to prior-art waveguide multiplexers at the same channel count"

Lumicore's Proposed Construction: "insertion loss of less than 1.5 dB per channel across the operating bandwidth"

Court's Construction. The Court adopts OWS's proposed construction. The term "low insertion loss" is construed to mean "insertion loss that is reduced relative to prior-art waveguide multiplexers at the same channel count."

Rationale. The '847 Patent specification uses "low insertion loss" as a relative, qualitative term of degree, describing the performance advantage of the claimed waveguide multiplexer over prior-art designs. The specification does not assign a specific numerical threshold to the term "low insertion loss." While the specification provides exemplary measurements — including "less than 2.0 dB per channel" at column 4, line 55, and "approximately 0.8 dB per channel" at column 5, line 10, in a preferred embodiment — these are illustrative values associated with specific embodiments and are not presented as definitional boundaries of the claim term.

The specification's statement of the problem addressed by the invention provides further context. At column 1, lines 45–65, the specification explains that "[p]rior-art waveguide multiplexers suffer from relatively high insertion losses, particularly at increased channel counts, due to imperfect mode matching and scattering at waveguide junctions." The specification then describes the invention as providing "low insertion loss" relative to these prior-art devices. This language confirms that "low insertion loss" is a comparative, relative term, not an absolute numerical threshold.

Lumicore's proposed construction of "insertion loss of less than 1.5 dB per channel across the operating bandwidth" draws the 1.5 dB figure from a single data point in Table 2 of the specification, which presents measured insertion-loss values for a 16-channel AWG embodiment. The 1.5 dB value appears as the maximum measured insertion loss for the worst-case channel in that particular embodiment. This data point does not constitute a definitional statement, and adopting it as the claim construction would improperly narrow the claim to a preferred range associated with a single embodiment. See Ashford Corporation v. Ashgrove Partners LLC, 158 F.3d 1243, 1249 (Fed. Cir. 1998) (cautioning against importing numerical values from specific examples into claim limitations).

The prosecution history does not narrow the term. The term "low insertion loss" was present in Claim 1 as originally filed and was not amended during prosecution. The examiner did not require the applicant to define a specific numerical threshold for "low insertion loss" as a condition of allowance.

Dr. Ashford's declaration (D.E. 44-1, ¶¶ 125–135) explains that a POSITA would understand "low insertion loss" as a relative descriptor, evaluated in comparison to the performance of existing waveguide multiplexers at comparable channel counts and operating bandwidths. Dr. Ashford notes that the acceptable threshold for "low" insertion loss varies depending on the application, the channel count, the operating wavelength band, and the state of the art at the relevant time, and that a POSITA would not assign a fixed numerical value to the term without reference to the relevant context.

The Court recognizes that relative terms such as "low insertion loss" can present challenges in application. However, the Federal Circuit has held that relative terms are not inherently indefinite and may be construed by reference to the context provided by the specification and prosecution history. See Interval Licensing LLC v. Greaves Solutions, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014); Enzo Biochem, Inc. v. Corara Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010). Here, the specification provides sufficient context — including the comparison to prior-art multiplexers — to give meaning to the term. Neither party has argued that the term is indefinite under 35 U.S.C. § 112(b).

For these reasons, the Court adopts OWS's proposed construction.

G. Term 7: "multi-channel"

Patent: U.S. Patent No. 10,234,847 (the "'847 Patent")

Claim(s): Claims 1, 3, 5, 9, and 14

OWS's Proposed Construction: "having two or more optical channels operating at distinct wavelengths"

Lumicore's Proposed Construction: "having four or more DWDM channels on a standardized ITU-T grid"

Court's Construction. The Court adopts OWS's proposed construction. The term "multi-channel" is construed to mean "having two or more optical channels operating at distinct wavelengths."

Rationale. The '847 Patent specification describes embodiments with channel counts ranging from 2 to 64. At column 3, line 55, the specification introduces the concept of a "multi-channel waveguide multiplexer" and describes a two-channel embodiment as the simplest configuration. At column 4, lines 5–8, the specification describes four-channel, eight-channel, sixteen-channel, and sixty-four-channel configurations as progressively more complex embodiments. The specification does not impose any minimum channel count greater than two for the term "multi-channel."

Lumicore's proposed construction requires "four or more DWDM channels on a standardized ITU-T grid," which introduces two unsupported limitations. First, the minimum channel count of four has no basis in the claim language or specification. The prefix "multi-" is commonly understood to mean "more than one," and the specification expressly describes a two-channel embodiment as a "multi-channel" device. Second, the requirement that channels be on a "standardized ITU-T grid" has no basis in the intrinsic record. The specification describes channel arrangements on ITU-T DWDM grids (e.g., 100 GHz and 50 GHz spacing) as well as coarse wavelength division multiplexing ("CWDM") arrangements with 20 nm channel spacing, and also describes non-standard custom channel plans for specific applications. The claims do not recite any channel-spacing standard.

The prosecution history does not narrow the term. The term "multi-channel" was present in the claims as originally filed and was not amended or discussed in any Office Action or applicant response in a manner that would support Lumicore's proposed limitations.

Dr. Ashford attests (D.E. 44-1, ¶¶ 138–145) that a POSITA would understand "multi-channel" simply as "more than one channel," consistent with common usage in the field of optical communications. The Court finds this testimony consistent with the intrinsic evidence and credits it accordingly.

For these reasons, the Court adopts OWS's proposed construction.

H. Term 8: "high-bandwidth"

Patent: U.S. Patent No. 10,891,193 (the "'193 Patent")

Claim(s): Claims 1, 10, and 15

OWS's Proposed Construction: "capable of transmitting data at rates exceeding 100 Gbps per wavelength"

Lumicore's Proposed Construction: "capable of transmitting data at rates of 400 Gbps or greater per port using advanced modulation formats"

Court's Construction. The Court adopts OWS's proposed construction. The term "high-bandwidth" is construed to mean "capable of transmitting data at rates exceeding 100 Gbps per wavelength."

Rationale. The '193 Patent specification describes "high-bandwidth" transceivers operating at a range of per-wavelength data rates. At column 2, lines 30–45, the specification introduces the problem of achieving "high-bandwidth" optical transmission and frames the invention as addressing the need for transceivers capable of per-wavelength data rates exceeding 100 Gbps. At column 3, lines 10–20, the specification describes an embodiment operating at 100 Gbps per wavelength using dual-polarization quadrature phase-shift keying ("DP-QPSK") modulation. At column 4, lines 5–15, the specification describes another embodiment operating at 200 Gbps per wavelength using DP-16QAM modulation. At column 5, lines 25–35, the specification describes a further embodiment operating at 400 Gbps per wavelength. The broadest descriptions in the specification encompass any transceiver achieving per-wavelength data rates exceeding 100 Gbps, which the specification describes as the threshold for "high-bandwidth" operation.

Lumicore's proposed construction of "400 Gbps or greater per port" is drawn from the highest-performance embodiment described in the specification and would exclude the 100 Gbps and 200 Gbps per-wavelength embodiments that are also expressly disclosed. Adopting Lumicore's construction would improperly limit the claim to a single high-end embodiment.

Additionally, Lumicore's requirement of "advanced modulation formats" is unsupported by the intrinsic record. The specification describes various modulation schemes, including DP-QPSK, DP-16QAM, and PAM-4, without limiting the term "high-bandwidth" to any subset of modulation formats or categorizing certain formats as "advanced" and others as non-advanced. The term "advanced modulation formats" does not appear in the claims, specification, or prosecution history of the '193 Patent.

The prosecution history does not narrow the term "high-bandwidth." The term was present in the claims as originally filed and was not amended or discussed in any Office Action or applicant response in a manner that would support Lumicore's proposed numerical threshold or modulation-format limitation.

For these reasons, the Court adopts OWS's proposed construction.

I. Term 9: "embedded" (as in "embedded micro-channel heat sinks")

Patent: U.S. Patent No. 9,678,562 (the "'562 Patent")

Claim(s): Claims 1, 4, 6, and 11

OWS's Proposed Construction: "formed within or integrated into the body of the photonic integrated circuit substrate"

Lumicore's Proposed Construction: "etched directly into the silicon substrate of the photonic integrated circuit using MEMS fabrication techniques"

Court's Construction. The Court adopts OWS's proposed construction. The term "embedded" is construed to mean "formed within or integrated into the body of the photonic integrated circuit substrate."

Rationale. The '562 Patent specification describes micro-channels that are "embedded" in the substrate, using the term to describe the structural location of the channels — i.e., within or integrated into the body of the substrate — rather than specifying the fabrication method by which the channels are formed. At column 3, lines 45–55, the specification states: "The micro-channels are embedded within the substrate, providing direct thermal contact with the active photonic components on the chip surface." This language describes a structural relationship (the channels are within the substrate body) rather than a process limitation (the channels are made by a specific technique).

The specification describes multiple fabrication methods for forming embedded micro-channels. At column 4, lines 20–35, the specification describes MEMS-based etching as one fabrication approach. At column 4, lines 40–55, the specification describes deep reactive-ion etching ("DRIE") as an alternative approach. At column 5, lines 3–15, the specification describes laser ablation as yet another approach. Each of these methods produces micro-channels that are "embedded" within the substrate, and the specification does not favor any one method over the others for purposes of defining the claim term.

Lumicore's proposed construction would limit "embedded" to channels that are "etched directly into the silicon substrate of the photonic integrated circuit using MEMS fabrication techniques," thereby excluding channels formed by DRIE, laser ablation, or other fabrication methods disclosed in the specification. This improperly converts a structural descriptor (location within the substrate) into a process limitation (fabrication by MEMS techniques). The claim language uses "embedded" as an adjective describing the physical configuration of the channels, not as a verb describing how the channels were made. See Abbottott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1293 (Fed. Cir. 2009) (distinguishing structural limitations from process limitations in claim construction).

The prosecution history does not narrow the term "embedded" to MEMS fabrication techniques. As noted above, the "embedded" limitation was added during prosecution to overcome a § 103 rejection, but the amendment and accompanying remarks focused on the structural distinction between channels embedded within the substrate (as claimed) and channels formed on the surface of the substrate (as taught by the prior art). The remarks did not discuss or limit the fabrication method.

For these reasons, the Court adopts OWS's proposed construction.

J. Term 10: "silicon photonic transceiver"

Patent: U.S. Patent No. 11,402,015 (the "'015 Patent")

Claim(s): Claims 1, 5, 8, 12, and 16

OWS's Proposed Construction: "a transceiver that uses silicon-based photonic components to transmit and receive optical signals"

Lumicore's Proposed Construction: "a transceiver fabricated entirely on a silicon-on-insulator (SOI) platform that performs both transmit and receive functions without external III-V optical components"

Court's Construction. The Court adopts OWS's proposed construction. The term "silicon photonic transceiver" is construed to mean "a transceiver that uses silicon-based photonic components to transmit and receive optical signals."

Rationale. The '015 Patent specification discloses transceivers fabricated on SOI platforms as well as those employing hybrid integration of III-V gain elements on a silicon photonic platform. At column 3, lines 30–50, the specification describes a preferred embodiment in which all passive photonic components (waveguides, grating couplers, multiplexers, and splitters) are fabricated on an SOI wafer. At column 4, lines 5–20, the specification describes an InP-based distributed-feedback ("DFB") laser source that is heterogeneously integrated onto the silicon photonic platform via wafer-level bonding, noting that "[t]he resulting silicon photonic transceiver integrates the III-V gain element with the silicon photonic circuit to provide a complete transmit-and-receive optical engine on a single platform." At column 7, lines 10–25, the specification describes another embodiment in which an external III-V semiconductor optical amplifier ("SOA") is flip-chip bonded onto the silicon die.

Lumicore's proposed construction would exclude the hybrid-integration embodiments expressly described in the specification by requiring that the transceiver be fabricated "entirely on a silicon-on-insulator (SOI) platform" and operate "without external III-V optical components." This construction contradicts the specification's express disclosure of embodiments employing III-V gain elements on a silicon photonic platform and would exclude embodiments that the specification describes as falling within the scope of the claimed "silicon photonic transceiver."

The prosecution history does not disavow hybrid integration. During prosecution, the applicant distinguished the claimed invention from prior-art references based on functional and structural features unrelated to the question of monolithic versus hybrid integration. At no point did the applicant represent to the Patent Office that the claimed "silicon photonic transceiver" excluded transceivers employing heterogeneously integrated III-V components.

Dr. Ashford's declaration (D.E. 44-1, ¶¶ 155–165) explains that the optical communications industry commonly refers to transceivers as "silicon photonic" even when they employ heterogeneously integrated III-V components on a silicon platform, because the primary photonic circuit and the majority of the photonic components are fabricated in silicon. Dr. Ashford cites industry publications and standards documents from the Optical Internetworking Forum ("OIF") and the Photonic-Electronic Technology Research Association ("PETRA") that use the term "silicon photonic transceiver" to describe devices employing hybrid integration. The Court finds this extrinsic evidence consistent with and supportive of the intrinsic evidence.

For these reasons, the Court adopts OWS's proposed construction.

K. Term 11: "transceiver integrated on silicon substrate" (full phrase)

Patent: U.S. Patent No. 10,891,193 (the "'193 Patent")

Claim(s): Claim 18

OWS's Proposed Construction: The construction of this full phrase follows from the separately construed terms "integrated on a silicon substrate" (Term 2) and "silicon photonic transceiver" (Term 10) as set forth above. No additional construction is needed beyond the component terms.

Lumicore's Proposed Construction: "a single monolithic silicon die containing all transmit and receive photonic and electronic components without any hybrid or external components"

Court's Construction. The Court adopts OWS's position. The phrase "transceiver integrated on silicon substrate" is fully construed by the constructions of its component terms. "Integrated on a silicon substrate" means "formed on or within a silicon-based wafer using semiconductor fabrication processes," as set forth in Term 2 above. No additional narrowing is warranted for the full phrase.

Rationale. Lumicore's proposed construction for the full phrase attempts to re-introduce the same monolithic-integration limitation that the Court has already rejected in construing the constituent terms. Specifically, Lumicore's requirement that the transceiver be "a single monolithic silicon die containing all transmit and receive photonic and electronic components without any hybrid or external components" is substantively identical to the constructions the Court rejected for "integrated on a silicon substrate" (Term 2) and "silicon photonic transceiver" (Term 10).

Combining independently construed terms into a phrase does not create a basis for additional structural limitations that are not found in the claim language, specification, or prosecution history. The full phrase "transceiver integrated on silicon substrate" is the sum of its parts: a transceiver (using silicon-based photonic components to transmit and receive optical signals) that is integrated on a silicon substrate (formed on or within a silicon-based wafer using semiconductor fabrication processes). The Court will not re-litigate the scope of these component terms in the guise of construing the combined phrase.

For these reasons, the Court adopts OWS's position that the full phrase is adequately construed by the component terms, and no additional narrowing is warranted.

L. Term 12: "two-dimensional sub-wavelength grating"

Patent: U.S. Patent No. 11,402,015 (the "'015 Patent")

Claim(s): Claim 12

OWS's Proposed Construction: "a grating structure with periodic features in two spatial dimensions, where the grating period is smaller than the wavelength of the light being coupled"

Lumicore's Proposed Construction: "a grating with feature pitch smaller than the operating wavelength in both the x- and y-directions, having a symmetric unit cell that provides equal coupling efficiency for TE and TM polarizations"

Court's Construction. The Court adopts OWS's proposed construction. The term "two-dimensional sub-wavelength grating" is construed to mean "a grating structure with periodic features in two spatial dimensions, where the grating period is smaller than the wavelength of the light being coupled."

Rationale. The '015 Patent specification describes two-dimensional sub-wavelength gratings with both symmetric and asymmetric unit cells. At column 5, lines 40–60, the specification describes a preferred embodiment employing a symmetric unit cell (equal periodicity and duty cycle in both the x- and y-directions) that provides "substantially equal coupling efficiency for TE and TM polarizations." At column 6, lines 5–25, the specification describes an alternative embodiment employing an asymmetric unit cell (different periodicity or duty cycle in the x- and y-directions) that provides "tailored coupling efficiencies for TE and TM polarizations, enabling optimization for specific fiber-to-chip coupling applications." The specification does not require equal coupling efficiency for TE and TM polarizations as a defining characteristic of a "two-dimensional sub-wavelength grating." Rather, the specification describes "polarization-diverse" coupling that accommodates both polarizations, which may include deliberate asymmetries designed for specific performance objectives.

The prosecution history of the '015 Patent is instructive but does not support Lumicore's proposed symmetric-unit-cell limitation. As discussed above in connection with Term 4, during prosecution the examiner rejected Claims 1–16 under 35 U.S.C. § 103 as obvious in view of Bergmann (U.S. Patent No. 8,412,007) in combination with Simonsen (PCT/EP2015/071234). In response, OWS filed an amendment on June 14, 2021, amending dependent Claim 12 to add the "sub-wavelength" limitation — specifically, the requirement that the grating period be smaller than the operating wavelength. The accompanying remarks explained that neither Bergmann nor Simonsen disclosed a grating with a sub-wavelength period, and that the claimed sub-wavelength periodicity provided advantages in coupling efficiency and reduced diffraction losses not taught by the prior art. The amendment added the sub-wavelength limitation but did not add a symmetric-unit-cell requirement. The examiner's subsequent Notice of Allowance (mailed August 30, 2021) did not discuss unit-cell symmetry as a basis for allowance.

Lumicore's additional limitation of a "symmetric unit cell that provides equal coupling efficiency for TE and TM polarizations" finds no support in the prosecution history amendment. The amendment narrowed the grating from a two-dimensional grating (of any period) to a two-dimensional sub-wavelength grating (with period smaller than the operating wavelength), and nothing more. Importing a symmetric-unit-cell requirement would improperly narrow the claim beyond the scope of the amendment and would exclude the asymmetric-unit-cell embodiments expressly disclosed in the specification.

The Court notes, for the avoidance of any doubt, that the prosecution-history-estoppel implications of the Claim 12 amendment for the doctrine of equivalents analysis with respect to Claim 12 are addressed separately from claim construction and are not determined by this Order. The scope of prosecution history estoppel, if any, will be addressed at the appropriate procedural stage, whether in connection with dispositive motions or at trial.

For these reasons, the Court adopts OWS's proposed construction.

IV. AGREED-UPON TERMS

The parties have agreed on the construction of two (2) of the fourteen (14) identified claim terms, as reflected in the Joint Claim Construction Statement (D.E. 40) and the Final Joint Claim Construction Chart (D.E. 58). The Court finds the parties' agreed constructions to be reasonable and consistent with the intrinsic evidence, and hereby adopts the agreed constructions as set forth below.

A. Agreed Term A: "optical signal channel spacing"

Patent: U.S. Patent No. 10,234,847 (the "'847 Patent")

Claim(s): Claims 9 and 14

Agreed Construction: "the wavelength or frequency separation between adjacent optical signal channels in a wavelength-division multiplexed system"

The parties agree, and the Court finds, that this term describes the spectral separation between adjacent channels and does not require adherence to any particular industry-standard grid spacing. The Court adopts this agreed construction.

B. Agreed Term B: "thermal interface layer"

Patent: U.S. Patent No. 9,678,562 (the "'562 Patent")

Claim(s): Claims 4, 6, and 11

Agreed Construction: "a layer of thermally conductive material positioned between the photonic integrated circuit substrate and an external heat-dissipation element to facilitate heat transfer"

The parties agree, and the Court finds, that this term describes a structural feature — a thermally conductive intermediate layer — defined by its function and position, without limitation to any specific material composition or thickness. The Court adopts this agreed construction.

V. MEANS-PLUS-FUNCTION TERMS

The Court notes that certain claim limitations in the Asserted Patents may invoke 35 U.S.C. § 112(f), formerly § 112, ¶ 6, which provides that a claim element expressed as a me

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
[PROPOSED] ORDER CONSTRUING DISPUTED CLAIM TERMS
Before the Honorable James R. Gilstrap, United States District Judge
Filed by Plaintiff Optiwave Semiconductor Corp.
Submitted by counsel for Plaintiff Optiwave Semiconductor Corp.: Calderwood & Harkness LLP, 350 South Grand Avenue, 48th Floor, Los Angeles, California 90071, and 1201 F Street NW, Suite 700, Washington, DC 20004; and local counsel Whitmore & Callahan LLP, 110 North College Avenue, Suite 800, Tyler, Texas 75702.
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I. INTRODUCTORY RECITALS
WHEREAS, Plaintiff Optiwave Semiconductor Corp. ("OWS") filed the above-captioned action on April 22, 2024, alleging that Defendant Lumicore Technologies, Inc. ("Lumicore") has infringed and continues to infringe four United States utility patents owned by OWS, specifically: U.S. Patent No. 10,234,847 (the "'847 Patent"), entitled "Multi-Channel Low-Loss Waveguide Multiplexer for Silicon Photonic Integrated Circuits"; U.S. Patent No. 10,891,193 (the "'193 Patent"), entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate"; U.S. Patent No. 9,678,562 (the "'562 Patent"), entitled "Embedded Micro-Channel Thermal Management System for Photonic Integrated Circuits"; and U.S. Patent No. 11,402,015 (the "'015 Patent"), entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers" (collectively, the "Asserted Patents"); and
WHEREAS, the Complaint (D.E. 1), as amended by the First Amended Complaint (D.E. 18), identifies the following accused product lines manufactured, sold, offered for sale, imported, and/or used by Lumicore in the United States: the LumiLink 400G-ZR+ coherent optical transceiver module, the LumiLink 800G-DR8 direct-detect optical transceiver module, and the LumiEdge 1600G-LR long-reach coherent transceiver module (collectively, the "Accused Products"), each of which OWS alleges practices one or more claims of the Asserted Patents; and
WHEREAS, OWS is represented in this action by the law firm of Calderwood & Harkness LLP, with Alan Ngo serving as Responsible Partner, Marcus Delgado serving as Billing Partner, Wendy Schultz serving as Lead Associate, and Omar Siddiqui serving as Working Associate, and by local counsel Whitmore & Callahan LLP, with James "Jim" Callahan serving as local counsel of record; and Lumicore is represented in this action by the law firm of Hawthorne Vega & Cruz LLP, with Catherine "Kate" Rourke serving as Lead Partner, Darren Cho serving as Second Chair Partner, Samantha Briggs serving as Lead Associate, and Rohan Iyer serving as Working Associate, and by local counsel Trask Eddington LLP, with Maria Garza serving as local counsel of record; and
WHEREAS, on October 28, 2024, in accordance with the Court's Docket Control Order (D.E. 22) and this Court's Patent Rules, the parties filed a Joint Claim Construction Statement (D.E. 40) identifying fourteen (14) disputed claim terms from the Asserted Patents requiring construction by the Court, of which two (2) terms were subsequently agreed upon by the parties through the meet-and-confer process required by this Court's rules, leaving twelve (12) terms in dispute for resolution by the Court, along with two (2) terms potentially invoking 35 U.S.C. § 112(f); and
WHEREAS, OWS filed its Opening Claim Construction Brief on November 15, 2024 (D.E. 44), which was supported by the Declaration of Dr. Caroline Ashford (D.E. 44-1), Professor of Electrical Engineering & Photonics at Northfield Institute of Technology, who was retained as Plaintiff's technical expert on claim construction and who opined on the understanding of a person of ordinary skill in the art with respect to each disputed term, and was further supported by the Declaration of Dr. Jian-Wei Huang (D.E. 44-2), OWS's Chief Technology Officer and a named inventor on the '847 Patent, the '193 Patent, and the '015 Patent, who provided testimony regarding the context and purpose of the inventions disclosed in the Asserted Patents; and
WHEREAS, Lumicore filed its Responsive Claim Construction Brief on December 6, 2024 (D.E. 48), which was supported by the Declaration of Dr. Rajesh Sundaram (D.E. 48-1), Professor of Electrical & Computer Engineering at Pacific Western University, who was retained as Defendant's technical and validity expert on claim construction and who opined on the understanding of a person of ordinary skill in the art with respect to each disputed term and offered opinions regarding the prosecution histories and prior art relevant to certain of the disputed terms; and
WHEREAS, OWS filed its Reply Claim Construction Brief on December 20, 2024 (D.E. 52), which was supported by the Supplemental Declaration of Dr. Caroline Ashford (D.E. 52-1), responding to and rebutting opinions expressed by Dr. Sundaram in his declaration, addressing specific points regarding the intrinsic evidence, prosecution history, and the understanding of a person of ordinary skill in the art; and
WHEREAS, Lumicore filed its Sur-Reply Claim Construction Brief on January 10, 2025 (D.E. 56), by leave of Court, the Court having granted Lumicore's Motion for Leave to File Sur-Reply (D.E. 54) on January 3, 2025, finding that OWS's Reply Brief raised new arguments that warranted a response from Lumicore in the interest of fairness and completeness of the record; and
WHEREAS, the parties submitted a Final Joint Claim Construction Chart on January 15, 2025 (D.E. 58), consolidating each party's final proposed construction for all fourteen (14) identified terms, together with citations to supporting intrinsic and extrinsic evidence for each proposed construction, as required by the Court's Docket Control Order; and
WHEREAS, in February 2025, the parties submitted claim construction tutorial presentations to the Court, providing technological background and context for the disputed claim terms, including detailed explanations of silicon photonics, waveguide multiplexing techniques, coherent optical transceiver architectures, thermal management in photonic integrated circuits, and polarization-diverse grating couplers, accompanied by demonstrative exhibits, annotated patent figures, and prior-art comparisons designed to assist the Court in understanding the field of the invention; and
WHEREAS, the Court conducted a Markman hearing on March 14, 2025, at which counsel for both parties presented oral argument on the twelve (12) disputed claim terms and the two (2) potential means-plus-function terms, responded to questions from the Court, and addressed the parties' respective positions as set forth in the briefing and supporting declarations; and
WHEREAS, claim construction is a matter of law for the Court, as established by Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), and Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and the words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of the invention, read in the context of the patent specification and prosecution history; and
WHEREAS, the intrinsic record — comprising the claims themselves, the written description and figures of the specification, and the prosecution history — is the primary and most reliable source for claim construction, and extrinsic evidence, including expert testimony, dictionaries, learned treatises, and technical literature, may be considered to assist the Court in understanding the technology and the meaning of terms in the art, but such extrinsic evidence may not be used to contradict the meaning of claim terms as established by the intrinsic record, see Phillips, 415 F.3d at 1317–19; Ridgeway & Co. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996); and
WHEREAS, the Court adopts, for purposes of this litigation, the following definition of a person of ordinary skill in the art ("POSITA") as applicable to the Asserted Patents: a person possessing a Master of Science or Doctor of Philosophy degree in electrical engineering, photonics, optical engineering, or a closely related discipline, and having at least three (3) years of experience in the design, fabrication, testing, or characterization of silicon-photonic integrated circuits, including experience with waveguide-based optical components, coherent transceivers, or related photonic systems, which definition is consistent with the definition proposed by Dr. Caroline Ashford in her Declaration (D.E. 44-1, ¶¶ 18–22) and is substantially similar to the definition proposed by Dr. Rajesh Sundaram (D.E. 48-1, ¶¶ 15–19), the principal difference between the two experts' proposed definitions being Dr. Sundaram's additional requirement of five years of industry experience, which the Court finds unnecessarily restrictive and not reflective of the level of skill in the art at the time of the inventions; and
WHEREAS, with respect to the patent family and priority relationships among the Asserted Patents, the Court notes the following: the '562 Patent was filed on November 22, 2014, and issued on June 13, 2017, and was originally assigned to Solara Optics, Inc., a California corporation; OWS acquired the '562 Patent, along with a portfolio of related patents and patent applications, from Solara Optics, Inc. pursuant to an Asset Purchase Agreement dated June 15, 2018, for a total purchase price of $34.5 million; the '847 Patent was filed on September 14, 2016, and issued on March 19, 2019, and was originally assigned to OWS; the '562 Patent and the '847 Patent are in the same patent family, with the '847 Patent being a continuation of the '562 Patent and claiming priority thereto; the '193 Patent was filed on April 7, 2017, and issued on January 12, 2021, and was assigned to OWS upon issuance; the '015 Patent was filed on August 30, 2019, and issued on August 2, 2022, and was assigned to OWS upon issuance; and the '193 Patent and the '015 Patent share a common provisional application, Provisional Application No. 62/499,117, filed April 7, 2017, from which both non-provisional applications claim priority; and
WHEREAS, all four Asserted Patents were prosecuted before the United States Patent and Trademark Office by the law firm of Cascade IP Advisors, LLC, with Dr. Martin Chu serving as lead prosecution attorney and attorney of record for each application;
II. ORDER
NOW THEREFORE, having carefully considered the parties' Opening, Responsive, Reply, and Sur-Reply Claim Construction Briefs, the Declarations and Supplemental Declaration of Dr. Caroline Ashford submitted on behalf of OWS, the Declaration of Dr. Rajesh Sundaram submitted on behalf of Lumicore, the Declaration of Dr. Jian-Wei Huang submitted on behalf of OWS, the Joint Claim Construction Statement (D.E. 40), the Final Joint Claim Construction Chart (D.E. 58), the claim construction tutorial presentations submitted by both parties, the arguments of counsel presented at the Markman hearing conducted on March 14, 2025, and the complete record of intrinsic and extrinsic evidence before the Court, including the claims, specifications, and prosecution histories of each of the four Asserted Patents, and being fully advised in the premises, the Court hereby ORDERS that the disputed claim terms of the Asserted Patents shall be construed as set forth below.
III. CONSTRUCTIONS OF DISPUTED CLAIM TERMS
A. Term 1: "waveguide multiplexer"
Patent: U.S. Patent No. 10,234,847 (the "'847 Patent")
Claim(s): Claims 1, 3, 5, 9, and 14
OWS's Proposed Construction: "an optical device that combines multiple optical signals of different wavelengths onto a single waveguide"
Lumicore's Proposed Construction: "an arrayed waveguide grating that combines optical signals using a slab coupler and phase-shifted waveguide array"
Court's Construction. The Court adopts OWS's proposed construction. The term "waveguide multiplexer" is construed to mean "an optical device that combines multiple optical signals of different wavelengths onto a single waveguide."
Rationale. The claim language of independent Claim 1 of the '847 Patent recites a "waveguide multiplexer" without limiting the term to any specific type of multiplexing architecture or structural implementation. The claim uses a broad, functional description — multiplexing optical signals via a waveguide-based device — and does not specify the particular physical mechanism or structure by which wavelength combining is achieved.
The '847 Patent specification confirms the breadth of the term. The specification describes multiple embodiments of waveguide multiplexers suitable for use in the claimed invention. At column 4, lines 12–35, the specification describes an arrayed waveguide grating ("AWG") embodiment employing a slab coupler and a phased array of waveguides to achieve wavelength-dependent constructive interference at output ports. At column 5, lines 3–28, the specification describes an alternative embodiment employing a Mach-Zehnder interferometer ("MZI") based multiplexer architecture with cascaded stages. At column 6, lines 15–42, the specification describes yet another embodiment employing an echelle-grating multiplexer, in which a concave diffraction grating etched into a slab waveguide provides wavelength-selective focusing. In each instance, the specification describes the embodiment as a "waveguide multiplexer" falling within the scope of the invention. Confining the term to a single one of these embodiments — the AWG with slab coupler, as Lumicore proposes — would improperly read a preferred embodiment limitation into the claims, in direct contravention of the principle articulated by the Federal Circuit in Phillips, 415 F.3d at 1323 ("[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.").
The prosecution history of the '847 Patent does not reflect any narrowing amendment or disclaimer that would limit the term "waveguide multiplexer" to arrayed waveguide gratings. During prosecution, the examiner issued an Office Action dated February 12, 2018, rejecting Claims 1–14 under 35 U.S.C. § 102(a)(1) over the Tanaka reference (U.S. Patent No. 9,052,448). In response, OWS amended certain dependent claims to add structural limitations distinguishing the claimed invention from Tanaka's disclosed architecture, but the term "waveguide multiplexer" in independent Claim 1 was not amended or narrowed. There is no prosecution history estoppel applicable to this term.
The Declaration of Dr. Caroline Ashford (D.E. 44-1, ¶¶ 35–42) explains that a person of ordinary skill in the art would understand the term "waveguide multiplexer" broadly to encompass any optical device that combines multiple wavelength channels into a single waveguide output, including AWGs, MZI-based multiplexers, echelle-grating multiplexers, and ring-resonator-based multiplexers, among other architectures known in the field. Dr. Ashford's opinion is consistent with the intrinsic evidence and is credited by the Court.
Dr. Sundaram's declaration (D.E. 48-1, ¶¶ 45–53) asserts that a POSITA would understand "waveguide multiplexer" to refer specifically to an AWG, based on his assertion that AWGs were the "dominant" multiplexing architecture in silicon photonics at the time of the invention. However, even if AWGs were the most common architecture, that does not mean the claim term is limited to AWGs, particularly where the specification expressly discloses alternative architectures. Dr. Sundaram's opinion impermissibly seeks to narrow the claim term based on industry prevalence rather than the intrinsic record.
Finally, the principle of claim differentiation supports the broader construction. Dependent Claim 3 of the '847 Patent recites that "the waveguide multiplexer comprises an arrayed waveguide grating," and dependent Claim 5 recites that "the waveguide multiplexer comprises a Mach-Zehnder interferometer-based coupler configuration." The presence of these narrowing dependent claims demonstrates that the patentee intended the independent claim term "waveguide multiplexer" to be broader than any single architecture. If independent Claim 1 were already limited to an AWG, as Lumicore proposes, then dependent Claim 3 would be rendered superfluous, violating the doctrine of claim differentiation. See Comark Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) ("The 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.").
For these reasons, the Court adopts OWS's proposed construction of "waveguide multiplexer."
B. Term 2: "integrated on a silicon substrate"
Patent: U.S. Patent No. 10,891,193 (the "'193 Patent")
Claim(s): Claims 1, 3, 7, 10, 15, and 18
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"
Court's Construction. The Court adopts OWS's proposed construction. The term "integrated on a silicon substrate" is construed to mean "formed on or within a silicon-based wafer using semiconductor fabrication processes."
Rationale. The '193 Patent specification describes integration techniques that encompass both monolithic and hybrid approaches. At column 3, lines 22–45, the specification describes a preferred embodiment in which all photonic components — including modulators, waveguides, photodetectors, and passive optical elements — are monolithically fabricated on a single silicon-on-insulator (SOI) wafer using standard CMOS-compatible processes. However, the specification does not limit the invention to monolithic integration. At column 7, lines 5–30, the specification expressly describes an alternative embodiment employing heterogeneous integration of III-V gain media on a silicon substrate, stating: "In certain embodiments, a III-V semiconductor gain element, such as an InP-based distributed-feedback laser, may be heterogeneously integrated onto the silicon substrate via wafer-level bonding or die-level flip-chip attachment, thereby providing optical gain functionality that is not readily achievable in pure silicon." At column 8, lines 12–28, the specification further describes a hybrid-bonding technique in which pre-fabricated photodetector arrays are bonded to the silicon photonic circuit using micro-bump interconnects.
Lumicore's proposed construction would exclude both the heterogeneous integration embodiment of column 7 and the hybrid-bonding embodiment of column 8, each of which is expressly described in the specification as being within the scope of the invention. The Federal Circuit has consistently held that "a claim construction that excludes a preferred embodiment is rarely, if ever, correct." Ridgeway & Co., 90 F.3d at 1583. Here, Lumicore's construction excludes not merely a preferred embodiment but multiple expressly disclosed embodiments, rendering the construction untenable.
The prosecution history of the '193 Patent, which claims priority to Provisional Application No. 62/499,117, filed April 7, 2017, does not contain any disavowal or narrowing of integration methods. During prosecution, the claims were amended to add the phrase "integrated on a silicon substrate" (Amendment filed July 22, 2020, in response to a § 103 rejection), but the amendment was accompanied by remarks stating that the amendment distinguished the claimed invention from the prior-art reference (Chen et al., U.S. Pub. No. 2016/0054522) based on the requirement of silicon-substrate integration rather than the InP-platform integration taught by Chen. The remarks did not distinguish between monolithic and hybrid integration approaches, and at no point did the applicant disclaim or disavow hybrid integration techniques.
Dr. Ashford's declaration (D.E. 44-1, ¶¶ 55–65) explains that a POSITA would understand the phrase "integrated on a silicon substrate" to cover any semiconductor fabrication process by which components are formed on or within a silicon wafer, including but not limited to monolithic CMOS processes, hybrid bonding, flip-chip bonding, and heterogeneous integration. Dr. Ashford notes that the silicon photonics industry routinely employs hybrid integration techniques and that a POSITA would not understand "integrated on a silicon substrate" to exclude components that are bonded or otherwise attached to a silicon wafer merely because the component material is not itself silicon.
Dr. Sundaram relies on several extrinsic publications, including a trade publication definition from Silicon Photonics Design Handbook (2015 ed.) that defines "monolithic integration" as distinct from "hybrid integration." While this extrinsic evidence accurately describes the distinction between the two integration approaches, it does not support the conclusion that the claim term "integrated on a silicon substrate" is limited to monolithic integration. The extrinsic evidence cannot override the clear intrinsic evidence showing that multiple integration methods — both monolithic and hybrid — are within the scope of the specification. See Phillips, 415 F.3d at 1318 ("Extrinsic evidence is less significant than the intrinsic record in determining the legally operative meaning of claim language.").
For these reasons, the Court adopts OWS's proposed construction.
C. Term 3: "micro-channel heat sink"
Patent: U.S. Patent No. 9,678,562 (the "'562 Patent")
Claim(s): Claims 1, 4, 6, and 11
OWS's Proposed Construction: "a heat-dissipating structure containing channels with a hydraulic diameter of less than 1 mm"
Lumicore's Proposed Construction: "a closed-loop liquid-cooling system with channels having a hydraulic diameter between 10 µm and 200 µm"
Court's Construction. The Court adopts OWS's proposed construction. The term "micro-channel heat sink" is construed to mean "a heat-dissipating structure containing channels with a hydraulic diameter of less than 1 mm."
Rationale. The '562 Patent specification provides a clear lexicographic definition of the term "micro-channel" that the Court is bound to honor. At column 2, lines 38–42, the specification states: "As used herein, the term 'micro-channel' refers to a fluid-carrying channel having a hydraulic diameter generally less than 1 mm." This definitional statement constitutes an express lexicographic definition, and the Court must give the term the meaning assigned by the patentee. See Vitronics, 90 F.3d at 1582 ("A patentee is free to be his or her own lexicographer."); Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
The specification further describes both open-loop and closed-loop cooling configurations employing micro-channels. At column 5, lines 10–35, the specification describes a preferred embodiment employing a closed-loop pumped-fluid micro-channel heat sink with channels having a hydraulic diameter of approximately 100 µm. At column 6, lines 3–22, the specification describes an alternative embodiment employing an open-loop, capillary-driven two-phase micro-channel heat sink in which a working fluid evaporates within the channels and vapor escapes through micro-porous vents. At column 7, lines 14–38, the specification describes a passive micro-channel heat sink operating without active pumping, relying on natural convection and capillary forces. Across these various embodiments, the specification discloses channels ranging from approximately 50 µm to 500 µm in hydraulic diameter.
Lumicore's proposed construction is deficient in two respects. First, the proposed range of 10 µm to 200 µm in hydraulic diameter is narrower than the range disclosed in the specification (50 µm to 500 µm) and is inconsistent with the express lexicographic definition, which sets the upper boundary at 1 mm. Lumicore's proposed upper limit of 200 µm finds no support in the intrinsic record. Second, Lumicore's requirement of a "closed-loop liquid-cooling system" improperly limits the term to one cooling architecture when the specification expressly describes passive (capillary-driven), active (pumped-fluid), and two-phase micro-channel heat sinks that do not require a closed-loop configuration. The closed-loop limitation has no basis in the claim language, the specification's definitional statement, or the prosecution history.
The prosecution history for the '562 Patent (originally assigned to Solara Optics, Inc., filed November 22, 2014, issued June 13, 2017) does not include any amendment or examiner statement narrowing the claim term to closed-loop systems or to the 10–200 µm range proposed by Lumicore. During prosecution, the examiner allowed the claims after a § 103 rejection was overcome by amending certain claims to add the "embedded" limitation, which is separately construed below. The examiner's Reasons for Allowance (mailed March 20, 2017) do not discuss the "micro-channel heat sink" term in a manner that would support Lumicore's narrowing construction.
The Declaration of Dr. Ashford (D.E. 44-1, ¶¶ 72–85) and the prior-art analysis of Dr. Li Wei's 2013 conference paper, "Thermal Solutions for Photonic Integrated Circuits" (presented at the IEEE Optical Interconnects Conference, May 2013), confirm that the POSITA understanding of "micro-channel" at the time of the '562 Patent filing was channels with a hydraulic diameter below 1 mm, consistent with the express definition in the specification. Dr. Ashford further explains that the field of micro-channel heat sinks encompasses a range architectures, including open-loop, closed-loop, single-phase, and two-phase systems, and that a POSITA would not limit the term to any single configuration absent express claim language requiring such limitation.
For these reasons, the Court adopts OWS's proposed construction.
D. Term 4: "polarization-diverse grating coupler"
Patent: U.S. Patent No. 11,402,015 (the "'015 Patent")
Claim(s): Claims 1, 5, 8, 12, and 16
OWS's Proposed Construction: "a grating coupler capable of coupling light of two orthogonal polarization states"
Lumicore's Proposed Construction: "a two-dimensional grating coupler with a polarization-splitting element that simultaneously couples TE and TM modes"
Court's Construction. The Court adopts OWS's proposed construction. The term "polarization-diverse grating coupler" is construed to mean "a grating coupler capable of coupling light of two orthogonal polarization states."
Rationale. The claim language of independent Claim 1 of the '015 Patent recites a "polarization-diverse grating coupler" without specifying the structural mechanism by which polarization diversity is achieved. The claim uses a functional description — the ability to couple light of two orthogonal polarization states — rather than prescribing a particular structural implementation.
The '015 Patent specification describes at least three distinct embodiments achieving polarization diversity, each of which is described as a "polarization-diverse grating coupler" within the meaning of the invention:
(i) At column 4, lines 25–50, a two-dimensional grating coupler with an integrated polarization-splitting element, in which the grating's two-dimensional periodicity enables simultaneous coupling of both TE and TM polarization modes into separate waveguide outputs;
(ii) At column 5, lines 8–32, a pair of one-dimensional grating couplers arranged in an orthogonal configuration, in which each grating coupler is optimized for one polarization state and the combined structure achieves polarization diversity through spatial arrangement rather than two-dimensional periodicity; and
(iii) At column 6, lines 15–40, a grating coupler used in conjunction with an external polarization beam splitter, in which an off-chip polarization-splitting element separates the two orthogonal polarization components before they are coupled into the chip via separate one-dimensional grating couplers.
Lumicore's proposed construction, which requires a "two-dimensional grating coupler with a polarization-splitting element," encompasses only embodiment (i) and excludes embodiments (ii) and (iii). This improperly narrows the claim to a single embodiment, contrary to the well-established principle that claims are not to be confined to specific disclosed embodiments where the claim language is broader. See Phillips, 415 F.3d at 1323; Ashford Enterprises v. Dunmore Corporation, 358 F.3d 898, 906 (Fed. Cir. 2004).
The prosecution history of the '015 Patent includes a narrowing amendment to Claim 12 that merits discussion. During prosecution, the examiner issued an Office Action dated March 15, 2021, rejecting Claims 1–16 under 35 U.S.C. § 103 as obvious in view of Bergmann (U.S. Patent No. 8,412,007) in combination with Simonsen (PCT/EP2015/071234). In response, OWS filed an amendment on June 14, 2021, amending dependent Claim 12 to add the limitation "two-dimensional sub-wavelength grating," thereby distinguishing the claimed invention from the combination of Bergmann and Simonsen, which did not disclose a sub-wavelength grating period. Critically, the amendment was directed specifically to the "sub-wavelength grating" limitation in Claim 12 and did not amend or narrow the "polarization-diverse grating coupler" term that appears in independent Claim 1. There is no prosecution history estoppel or disclaimer applicable to the "polarization-diverse grating coupler" term based on the Claim 12 amendment.
The principle of claim differentiation further supports the broader construction. Dependent Claim 5 adds the limitation that the polarization-diverse grating coupler "comprises a two-dimensional grating with periodic features in two orthogonal directions," and dependent Claim 8 adds the limitation that the coupler "includes a polarization-splitting element configured to direct TE-mode light to a first waveguide and TM-mode light to a second waveguide." The presence of these narrowing dependent claims demonstrates that the independent claim term "polarization-diverse grating coupler" was intended to be broader than the specific structural requirements recited in the dependent claims. If independent Claim 1 already required a two-dimensional grating coupler with a polarization-splitting element, as Lumicore proposes, then dependent Claims 5 and 8 would add no meaningful limitation, rendering them superfluous.
Dr. Ashford's declaration (D.E. 44-1, ¶¶ 95–108) confirms that a POSITA would understand the term "polarization-diverse grating coupler" functionally — as any grating coupler designed to handle both orthogonal polarization states (TE and TM) — without imposing a structural limitation requiring a two-dimensional grating or a particular polarization-splitting mechanism. The Court credits this opinion as consistent with the intrinsic evidence.
For these reasons, the Court adopts OWS's proposed construction.
E. Term 5: "coherent detection module"
Patent: U.S. Patent No. 10,891,193 (the "'193 Patent")
Claim(s): Claims 3 and 7
OWS's Proposed Construction: "a module configured to detect the amplitude and phase of an optical signal using a local oscillator and optical mixing"
Lumicore's Proposed Construction: "an intradyne or homodyne coherent receiver with a 90-degree optical hybrid and balanced photodetectors monolithically integrated on the silicon substrate"
Court's Construction. The Court adopts OWS's proposed construction. The term "coherent detection module" is construed to mean "a module configured to detect the amplitude and phase of an optical signal using a local oscillator and optical mixing."
Rationale. The claim language recites "coherent detection module" without specifying the particular receiver architecture (intradyne, homodyne, or heterodyne), the specific optical hybrid configuration (90-degree or 120-degree), or the type of photodetectors employed (balanced or single-ended). The term describes a module by its function — coherent detection of amplitude and phase — and its essential components — a local oscillator and optical mixing — without prescribing the detailed internal structure of the module.
The '193 Patent specification describes multiple coherent detection architectures falling within the scope of the invention. At column 8, lines 30–55, the specification describes a preferred embodiment employing an intradyne receiver with a 90-degree optical hybrid and balanced photodetectors. At column 9, lines 5–25, the specification describes an alternative embodiment employing a homodyne receiver with a 120-degree optical hybrid. At column 9, lines 35–50, the specification further describes an embodiment using single-ended photodetectors with digital signal processing ("DSP") algorithms to compensate for the lack of balanced detection. These diverse embodiments confirm that the claim term was not intended to be limited to any single receiver architecture.
During prosecution of the '193 Patent, the examiner issued a § 102 rejection over Takahashi et al. ("Dense WDM Silicon Photonic MUX-DEMUX for communications," IEEE Photonics Technology Letters, Vol. 26, No. 6, March 2014). In response, OWS amended certain claims to distinguish over Takahashi's specific coherent receiver configuration. The amendment narrowed the "coherent detection module" limitation by adding the requirement that the module detect both "amplitude and phase" of the optical signal, which was already described in the specification. The amendment did not add the structural limitations that Lumicore now proposes — namely, a 90-degree optical hybrid, balanced photodetectors, or monolithic integration. The prosecution history thus does not support Lumicore's attempt to import these structural requirements into the claim term.
Moreover, Lumicore's proposed construction introduces a structural requirement — "monolithically integrated on the silicon substrate" — that conflates the "coherent detection module" term with the separately construed phrase "integrated on a silicon substrate" (Term 2, above). If the Court were to adopt Lumicore's construction, the claim would effectively contain two overlapping integration requirements: one from the "coherent detection module" term and one from the "integrated on a silicon substrate" phrase elsewhere in the claim. This double-counting of a limitation is improper and is unsupported by the claim structure, which treats the "coherent detection module" and the "integrated on a silicon substrate" phrase as distinct and independently operative limitations.
Dr. Ashford's declaration (D.E. 44-1, ¶¶ 110–122) confirms that a POSITA would understand "coherent detection module" as any module employing a local oscillator and optical mixing for the detection of amplitude and phase information from an incoming optical signal, without the specific structural constraints Lumicore proposes. Dr. Ashford notes that coherent detection is a well-understood concept in optical communications, and the essential characteristics of a coherent detection module — local oscillator, optical mixing, and amplitude/phase recovery — are universally recognized in the field without being tied to any particular implementation.
For these reasons, the Court adopts OWS's proposed construction.
F. Term 6: "low insertion loss"
Patent: U.S. Patent No. 10,234,847 (the "'847 Patent")
Claim(s): Claims 1, 9, and 14
OWS's Proposed Construction: "insertion loss that is reduced relative to prior-art waveguide multiplexers at the same channel count"
Lumicore's Proposed Construction: "insertion loss of less than 1.5 dB per channel across the operating bandwidth"
Court's Construction. The Court adopts OWS's proposed construction. The term "low insertion loss" is construed to mean "insertion loss that is reduced relative to prior-art waveguide multiplexers at the same channel count."
Rationale. The '847 Patent specification uses "low insertion loss" as a relative, qualitative term of degree, describing the performance advantage of the claimed waveguide multiplexer over prior-art designs. The specification does not assign a specific numerical threshold to the term "low insertion loss." While the specification provides exemplary measurements — including "less than 2.0 dB per channel" at column 4, line 55, and "approximately 0.8 dB per channel" at column 5, line 10, in a preferred embodiment — these are illustrative values associated with specific embodiments and are not presented as definitional boundaries of the claim term.
The specification's statement of the problem addressed by the invention provides further context. At column 1, lines 45–65, the specification explains that "[p]rior-art waveguide multiplexers suffer from relatively high insertion losses, particularly at increased channel counts, due to imperfect mode matching and scattering at waveguide junctions." The specification then describes the invention as providing "low insertion loss" relative to these prior-art devices. This language confirms that "low insertion loss" is a comparative, relative term, not an absolute numerical threshold.
Lumicore's proposed construction of "insertion loss of less than 1.5 dB per channel across the operating bandwidth" draws the 1.5 dB figure from a single data point in Table 2 of the specification, which presents measured insertion-loss values for a 16-channel AWG embodiment. The 1.5 dB value appears as the maximum measured insertion loss for the worst-case channel in that particular embodiment. This data point does not constitute a definitional statement, and adopting it as the claim construction would improperly narrow the claim to a preferred range associated with a single embodiment. See Ashford Corporation v. Ashgrove Partners LLC, 158 F.3d 1243, 1249 (Fed. Cir. 1998) (cautioning against importing numerical values from specific examples into claim limitations).
The prosecution history does not narrow the term. The term "low insertion loss" was present in Claim 1 as originally filed and was not amended during prosecution. The examiner did not require the applicant to define a specific numerical threshold for "low insertion loss" as a condition of allowance.
Dr. Ashford's declaration (D.E. 44-1, ¶¶ 125–135) explains that a POSITA would understand "low insertion loss" as a relative descriptor, evaluated in comparison to the performance of existing waveguide multiplexers at comparable channel counts and operating bandwidths. Dr. Ashford notes that the acceptable threshold for "low" insertion loss varies depending on the application, the channel count, the operating wavelength band, and the state of the art at the relevant time, and that a POSITA would not assign a fixed numerical value to the term without reference to the relevant context.
The Court recognizes that relative terms such as "low insertion loss" can present challenges in application. However, the Federal Circuit has held that relative terms are not inherently indefinite and may be construed by reference to the context provided by the specification and prosecution history. See Interval Licensing LLC v. Greaves Solutions, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014); Enzo Biochem, Inc. v. Corara Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010). Here, the specification provides sufficient context — including the comparison to prior-art multiplexers — to give meaning to the term. Neither party has argued that the term is indefinite under 35 U.S.C. § 112(b).
For these reasons, the Court adopts OWS's proposed construction.
G. Term 7: "multi-channel"
Patent: U.S. Patent No. 10,234,847 (the "'847 Patent")
Claim(s): Claims 1, 3, 5, 9, and 14
OWS's Proposed Construction: "having two or more optical channels operating at distinct wavelengths"
Lumicore's Proposed Construction: "having four or more DWDM channels on a standardized ITU-T grid"
Court's Construction. The Court adopts OWS's proposed construction. The term "multi-channel" is construed to mean "having two or more optical channels operating at distinct wavelengths."
Rationale. The '847 Patent specification describes embodiments with channel counts ranging from 2 to 64. At column 3, line 55, the specification introduces the concept of a "multi-channel waveguide multiplexer" and describes a two-channel embodiment as the simplest configuration. At column 4, lines 5–8, the specification describes four-channel, eight-channel, sixteen-channel, and sixty-four-channel configurations as progressively more complex embodiments. The specification does not impose any minimum channel count greater than two for the term "multi-channel."
Lumicore's proposed construction requires "four or more DWDM channels on a standardized ITU-T grid," which introduces two unsupported limitations. First, the minimum channel count of four has no basis in the claim language or specification. The prefix "multi-" is commonly understood to mean "more than one," and the specification expressly describes a two-channel embodiment as a "multi-channel" device. Second, the requirement that channels be on a "standardized ITU-T grid" has no basis in the intrinsic record. The specification describes channel arrangements on ITU-T DWDM grids (e.g., 100 GHz and 50 GHz spacing) as well as coarse wavelength division multiplexing ("CWDM") arrangements with 20 nm channel spacing, and also describes non-standard custom channel plans for specific applications. The claims do not recite any channel-spacing standard.
The prosecution history does not narrow the term. The term "multi-channel" was present in the claims as originally filed and was not amended or discussed in any Office Action or applicant response in a manner that would support Lumicore's proposed limitations.
Dr. Ashford attests (D.E. 44-1, ¶¶ 138–145) that a POSITA would understand "multi-channel" simply as "more than one channel," consistent with common usage in the field of optical communications. The Court finds this testimony consistent with the intrinsic evidence and credits it accordingly.
For these reasons, the Court adopts OWS's proposed construction.
H. Term 8: "high-bandwidth"
Patent: U.S. Patent No. 10,891,193 (the "'193 Patent")
Claim(s): Claims 1, 10, and 15
OWS's Proposed Construction: "capable of transmitting data at rates exceeding 100 Gbps per wavelength"
Lumicore's Proposed Construction: "capable of transmitting data at rates of 400 Gbps or greater per port using advanced modulation formats"
Court's Construction. The Court adopts OWS's proposed construction. The term "high-bandwidth" is construed to mean "capable of transmitting data at rates exceeding 100 Gbps per wavelength."
Rationale. The '193 Patent specification describes "high-bandwidth" transceivers operating at a range of per-wavelength data rates. At column 2, lines 30–45, the specification introduces the problem of achieving "high-bandwidth" optical transmission and frames the invention as addressing the need for transceivers capable of per-wavelength data rates exceeding 100 Gbps. At column 3, lines 10–20, the specification describes an embodiment operating at 100 Gbps per wavelength using dual-polarization quadrature phase-shift keying ("DP-QPSK") modulation. At column 4, lines 5–15, the specification describes another embodiment operating at 200 Gbps per wavelength using DP-16QAM modulation. At column 5, lines 25–35, the specification describes a further embodiment operating at 400 Gbps per wavelength. The broadest descriptions in the specification encompass any transceiver achieving per-wavelength data rates exceeding 100 Gbps, which the specification describes as the threshold for "high-bandwidth" operation.
Lumicore's proposed construction of "400 Gbps or greater per port" is drawn from the highest-performance embodiment described in the specification and would exclude the 100 Gbps and 200 Gbps per-wavelength embodiments that are also expressly disclosed. Adopting Lumicore's construction would improperly limit the claim to a single high-end embodiment.
Additionally, Lumicore's requirement of "advanced modulation formats" is unsupported by the intrinsic record. The specification describes various modulation schemes, including DP-QPSK, DP-16QAM, and PAM-4, without limiting the term "high-bandwidth" to any subset of modulation formats or categorizing certain formats as "advanced" and others as non-advanced. The term "advanced modulation formats" does not appear in the claims, specification, or prosecution history of the '193 Patent.
The prosecution history does not narrow the term "high-bandwidth." The term was present in the claims as originally filed and was not amended or discussed in any Office Action or applicant response in a manner that would support Lumicore's proposed numerical threshold or modulation-format limitation.
For these reasons, the Court adopts OWS's proposed construction.
I. Term 9: "embedded" (as in "embedded micro-channel heat sinks")
Patent: U.S. Patent No. 9,678,562 (the "'562 Patent")
Claim(s): Claims 1, 4, 6, and 11
OWS's Proposed Construction: "formed within or integrated into the body of the photonic integrated circuit substrate"
Lumicore's Proposed Construction: "etched directly into the silicon substrate of the photonic integrated circuit using MEMS fabrication techniques"
Court's Construction. The Court adopts OWS's proposed construction. The term "embedded" is construed to mean "formed within or integrated into the body of the photonic integrated circuit substrate."
Rationale. The '562 Patent specification describes micro-channels that are "embedded" in the substrate, using the term to describe the structural location of the channels — i.e., within or integrated into the body of the substrate — rather than specifying the fabrication method by which the channels are formed. At column 3, lines 45–55, the specification states: "The micro-channels are embedded within the substrate, providing direct thermal contact with the active photonic components on the chip surface." This language describes a structural relationship (the channels are within the substrate body) rather than a process limitation (the channels are made by a specific technique).
The specification describes multiple fabrication methods for forming embedded micro-channels. At column 4, lines 20–35, the specification describes MEMS-based etching as one fabrication approach. At column 4, lines 40–55, the specification describes deep reactive-ion etching ("DRIE") as an alternative approach. At column 5, lines 3–15, the specification describes laser ablation as yet another approach. Each of these methods produces micro-channels that are "embedded" within the substrate, and the specification does not favor any one method over the others for purposes of defining the claim term.
Lumicore's proposed construction would limit "embedded" to channels that are "etched directly into the silicon substrate of the photonic integrated circuit using MEMS fabrication techniques," thereby excluding channels formed by DRIE, laser ablation, or other fabrication methods disclosed in the specification. This improperly converts a structural descriptor (location within the substrate) into a process limitation (fabrication by MEMS techniques). The claim language uses "embedded" as an adjective describing the physical configuration of the channels, not as a verb describing how the channels were made. See Abbottott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1293 (Fed. Cir. 2009) (distinguishing structural limitations from process limitations in claim construction).
The prosecution history does not narrow the term "embedded" to MEMS fabrication techniques. As noted above, the "embedded" limitation was added during prosecution to overcome a § 103 rejection, but the amendment and accompanying remarks focused on the structural distinction between channels embedded within the substrate (as claimed) and channels formed on the surface of the substrate (as taught by the prior art). The remarks did not discuss or limit the fabrication method.
For these reasons, the Court adopts OWS's proposed construction.
J. Term 10: "silicon photonic transceiver"
Patent: U.S. Patent No. 11,402,015 (the "'015 Patent")
Claim(s): Claims 1, 5, 8, 12, and 16
OWS's Proposed Construction: "a transceiver that uses silicon-based photonic components to transmit and receive optical signals"
Lumicore's Proposed Construction: "a transceiver fabricated entirely on a silicon-on-insulator (SOI) platform that performs both transmit and receive functions without external III-V optical components"
Court's Construction. The Court adopts OWS's proposed construction. The term "silicon photonic transceiver" is construed to mean "a transceiver that uses silicon-based photonic components to transmit and receive optical signals."
Rationale. The '015 Patent specification discloses transceivers fabricated on SOI platforms as well as those employing hybrid integration of III-V gain elements on a silicon photonic platform. At column 3, lines 30–50, the specification describes a preferred embodiment in which all passive photonic components (waveguides, grating couplers, multiplexers, and splitters) are fabricated on an SOI wafer. At column 4, lines 5–20, the specification describes an InP-based distributed-feedback ("DFB") laser source that is heterogeneously integrated onto the silicon photonic platform via wafer-level bonding, noting that "[t]he resulting silicon photonic transceiver integrates the III-V gain element with the silicon photonic circuit to provide a complete transmit-and-receive optical engine on a single platform." At column 7, lines 10–25, the specification describes another embodiment in which an external III-V semiconductor optical amplifier ("SOA") is flip-chip bonded onto the silicon die.
Lumicore's proposed construction would exclude the hybrid-integration embodiments expressly described in the specification by requiring that the transceiver be fabricated "entirely on a silicon-on-insulator (SOI) platform" and operate "without external III-V optical components." This construction contradicts the specification's express disclosure of embodiments employing III-V gain elements on a silicon photonic platform and would exclude embodiments that the specification describes as falling within the scope of the claimed "silicon photonic transceiver."
The prosecution history does not disavow hybrid integration. During prosecution, the applicant distinguished the claimed invention from prior-art references based on functional and structural features unrelated to the question of monolithic versus hybrid integration. At no point did the applicant represent to the Patent Office that the claimed "silicon photonic transceiver" excluded transceivers employing heterogeneously integrated III-V components.
Dr. Ashford's declaration (D.E. 44-1, ¶¶ 155–165) explains that the optical communications industry commonly refers to transceivers as "silicon photonic" even when they employ heterogeneously integrated III-V components on a silicon platform, because the primary photonic circuit and the majority of the photonic components are fabricated in silicon. Dr. Ashford cites industry publications and standards documents from the Optical Internetworking Forum ("OIF") and the Photonic-Electronic Technology Research Association ("PETRA") that use the term "silicon photonic transceiver" to describe devices employing hybrid integration. The Court finds this extrinsic evidence consistent with and supportive of the intrinsic evidence.
For these reasons, the Court adopts OWS's proposed construction.
K. Term 11: "transceiver integrated on silicon substrate" (full phrase)
Patent: U.S. Patent No. 10,891,193 (the "'193 Patent")
Claim(s): Claim 18
OWS's Proposed Construction: The construction of this full phrase follows from the separately construed terms "integrated on a silicon substrate" (Term 2) and "silicon photonic transceiver" (Term 10) as set forth above. No additional construction is needed beyond the component terms.
Lumicore's Proposed Construction: "a single monolithic silicon die containing all transmit and receive photonic and electronic components without any hybrid or external components"
Court's Construction. The Court adopts OWS's position. The phrase "transceiver integrated on silicon substrate" is fully construed by the constructions of its component terms. "Integrated on a silicon substrate" means "formed on or within a silicon-based wafer using semiconductor fabrication processes," as set forth in Term 2 above. No additional narrowing is warranted for the full phrase.
Rationale. Lumicore's proposed construction for the full phrase attempts to re-introduce the same monolithic-integration limitation that the Court has already rejected in construing the constituent terms. Specifically, Lumicore's requirement that the transceiver be "a single monolithic silicon die containing all transmit and receive photonic and electronic components without any hybrid or external components" is substantively identical to the constructions the Court rejected for "integrated on a silicon substrate" (Term 2) and "silicon photonic transceiver" (Term 10).
Combining independently construed terms into a phrase does not create a basis for additional structural limitations that are not found in the claim language, specification, or prosecution history. The full phrase "transceiver integrated on silicon substrate" is the sum of its parts: a transceiver (using silicon-based photonic components to transmit and receive optical signals) that is integrated on a silicon substrate (formed on or within a silicon-based wafer using semiconductor fabrication processes). The Court will not re-litigate the scope of these component terms in the guise of construing the combined phrase.
For these reasons, the Court adopts OWS's position that the full phrase is adequately construed by the component terms, and no additional narrowing is warranted.
L. Term 12: "two-dimensional sub-wavelength grating"
Patent: U.S. Patent No. 11,402,015 (the "'015 Patent")
Claim(s): Claim 12
OWS's Proposed Construction: "a grating structure with periodic features in two spatial dimensions, where the grating period is smaller than the wavelength of the light being coupled"
Lumicore's Proposed Construction: "a grating with feature pitch smaller than the operating wavelength in both the x- and y-directions, having a symmetric unit cell that provides equal coupling efficiency for TE and TM polarizations"
Court's Construction. The Court adopts OWS's proposed construction. The term "two-dimensional sub-wavelength grating" is construed to mean "a grating structure with periodic features in two spatial dimensions, where the grating period is smaller than the wavelength of the light being coupled."
Rationale. The '015 Patent specification describes two-dimensional sub-wavelength gratings with both symmetric and asymmetric unit cells. At column 5, lines 40–60, the specification describes a preferred embodiment employing a symmetric unit cell (equal periodicity and duty cycle in both the x- and y-directions) that provides "substantially equal coupling efficiency for TE and TM polarizations." At column 6, lines 5–25, the specification describes an alternative embodiment employing an asymmetric unit cell (different periodicity or duty cycle in the x- and y-directions) that provides "tailored coupling efficiencies for TE and TM polarizations, enabling optimization for specific fiber-to-chip coupling applications." The specification does not require equal coupling efficiency for TE and TM polarizations as a defining characteristic of a "two-dimensional sub-wavelength grating." Rather, the specification describes "polarization-diverse" coupling that accommodates both polarizations, which may include deliberate asymmetries designed for specific performance objectives.
The prosecution history of the '015 Patent is instructive but does not support Lumicore's proposed symmetric-unit-cell limitation. As discussed above in connection with Term 4, during prosecution the examiner rejected Claims 1–16 under 35 U.S.C. § 103 as obvious in view of Bergmann (U.S. Patent No. 8,412,007) in combination with Simonsen (PCT/EP2015/071234). In response, OWS filed an amendment on June 14, 2021, amending dependent Claim 12 to add the "sub-wavelength" limitation — specifically, the requirement that the grating period be smaller than the operating wavelength. The accompanying remarks explained that neither Bergmann nor Simonsen disclosed a grating with a sub-wavelength period, and that the claimed sub-wavelength periodicity provided advantages in coupling efficiency and reduced diffraction losses not taught by the prior art. The amendment added the sub-wavelength limitation but did not add a symmetric-unit-cell requirement. The examiner's subsequent Notice of Allowance (mailed August 30, 2021) did not discuss unit-cell symmetry as a basis for allowance.
Lumicore's additional limitation of a "symmetric unit cell that provides equal coupling efficiency for TE and TM polarizations" finds no support in the prosecution history amendment. The amendment narrowed the grating from a two-dimensional grating (of any period) to a two-dimensional sub-wavelength grating (with period smaller than the operating wavelength), and nothing more. Importing a symmetric-unit-cell requirement would improperly narrow the claim beyond the scope of the amendment and would exclude the asymmetric-unit-cell embodiments expressly disclosed in the specification.
The Court notes, for the avoidance of any doubt, that the prosecution-history-estoppel implications of the Claim 12 amendment for the doctrine of equivalents analysis with respect to Claim 12 are addressed separately from claim construction and are not determined by this Order. The scope of prosecution history estoppel, if any, will be addressed at the appropriate procedural stage, whether in connection with dispositive motions or at trial.
For these reasons, the Court adopts OWS's proposed construction.
IV. AGREED-UPON TERMS
The parties have agreed on the construction of two (2) of the fourteen (14) identified claim terms, as reflected in the Joint Claim Construction Statement (D.E. 40) and the Final Joint Claim Construction Chart (D.E. 58). The Court finds the parties' agreed constructions to be reasonable and consistent with the intrinsic evidence, and hereby adopts the agreed constructions as set forth below.
A. Agreed Term A: "optical signal channel spacing"
Patent: U.S. Patent No. 10,234,847 (the "'847 Patent")
Claim(s): Claims 9 and 14
Agreed Construction: "the wavelength or frequency separation between adjacent optical signal channels in a wavelength-division multiplexed system"
The parties agree, and the Court finds, that this term describes the spectral separation between adjacent channels and does not require adherence to any particular industry-standard grid spacing. The Court adopts this agreed construction.
B. Agreed Term B: "thermal interface layer"
Patent: U.S. Patent No. 9,678,562 (the "'562 Patent")
Claim(s): Claims 4, 6, and 11
Agreed Construction: "a layer of thermally conductive material positioned between the photonic integrated circuit substrate and an external heat-dissipation element to facilitate heat transfer"
The parties agree, and the Court finds, that this term describes a structural feature — a thermally conductive intermediate layer — defined by its function and position, without limitation to any specific material composition or thickness. The Court adopts this agreed construction.
V. MEANS-PLUS-FUNCTION TERMS
The Court notes that certain claim limitations in the Asserted Patents may invoke 35 U.S.C. § 112(f), formerly § 112, ¶ 6, which provides that a claim element expressed as a me

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

I. INTRODUCTORY RECITALS

II. ORDER

III. CONSTRUCTIONS OF DISPUTED CLAIM TERMS

IV. AGREED-UPON TERMS

V. MEANS-PLUS-FUNCTION TERMS

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Parties

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