PRIVILEGED AND CONFIDENTIAL — ATTORNEY WORK PRODUCT — DO NOT DISTRIBUTE
PRIVILEGED AND CONFIDENTIAL — ATTORNEY WORK PRODUCT
Deposition Summary — Dr. Sandra Michaud, CTO, Lumicore Technologies, Inc.
November 22, 2024
NOTICE: This memorandum constitutes attorney work product prepared in anticipation of litigation and is protected by the attorney work product doctrine and the attorney-client privilege. This document contains mental impressions, conclusions, opinions, and legal theories of counsel. It is intended solely for the individuals identified above and must not be disclosed, distributed, copied, or otherwise disseminated to any person or entity not authorized to receive it. Unauthorized disclosure may result in waiver of applicable privileges.
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I. Overview of Deposition
This memorandum summarizes the deposition testimony of Dr. Sandra Michaud, Chief Technology Officer of Lumicore Technologies, Inc. ("Lumicore"), taken on November 19, 2024, at the offices of Hawthorne Vega & Cruz LLP in Austin, Texas. The deposition was taken pursuant to notice of deposition served by Calderwood & Harkness LLP on behalf of the plaintiff, Optiwave Semiconductor Corp. ("OWS" or "Optiwave"), in Optiwave Semiconductor Corp. v. Lumicore Technologies, Inc., Case No. 2:24-cv-00319-JRG (E.D. Tex.).
The examining attorney was Wendy Schultz of Calderwood & Harkness LLP, admitted pro hac vice in the Eastern District of Texas. The defending attorney was Catherine "Kate" Rourke of Hawthorne Vega & Cruz LLP ("HVC"), lead defense counsel for Lumicore. Also present during the deposition were Darren Cho of HVC (second chair for the defense), Omar Siddiqui of Calderwood & Harkness LLP (attending on behalf of OWS), and Samantha Briggs of HVC (attending on behalf of Lumicore). The court reporter's name is to be confirmed from the final transcript upon receipt. A videographer was also present and a video recording was made of the proceedings; the videographer's name is likewise to be confirmed from the transcript.
The deposition commenced at approximately 9:03 a.m. Central Time and concluded at approximately 5:47 p.m. Central Time. Accounting for scheduled breaks, including a midday lunch recess of approximately 45 minutes and several shorter breaks requested by defense counsel and the witness, the total time on the record was approximately seven (7) hours of testimony. The rough transcript runs to approximately 342 pages. During the deposition, twenty-seven (27) exhibits were marked as Michaud Exhibits 1 through 27, as catalogued in Section X of this memorandum.
This memorandum is organized topically rather than chronologically to facilitate use by the litigation team. Key admissions and significant testimony are highlighted throughout, and cross-references to related internal litigation documents are provided where applicable. Transcript page-and-line citations will be inserted in the Appendix (Section XIII) upon receipt of the finalized transcript from the court reporter.
II. Witness Background and Qualifications
A. Educational Background
Dr. Michaud testified regarding her educational background and academic credentials. She holds a Ph.D. in electrical engineering with a specialization in photonics. The specific institution and year of conferral are to be confirmed from the transcript upon receipt; however, based on testimony, it is understood that she received her doctorate in the mid-to-late 2000s from a major U.S. research university. She also holds a Bachelor of Science and a Master of Science in electrical engineering, both from accredited U.S. institutions.
Dr. Michaud testified that she held a postdoctoral research position for approximately two years following receipt of her Ph.D., during which she conducted research in silicon photonics and integrated optical components. She indicated that she authored or co-authored a number of peer-reviewed publications during her academic and postdoctoral career, though she was unable to provide a precise count during the deposition. She estimated the number of peer-reviewed publications at "approximately twenty to twenty-five." She is also a named inventor on multiple patents, though she did not provide a specific number during testimony. When asked whether she could provide a complete list of patents on which she is a named inventor, she indicated that she could do so with the assistance of Lumicore's patent department. As of the date of this memorandum, no such list has been produced in discovery.
B. Employment History
Dr. Michaud was questioned about her professional employment history prior to joining Lumicore Technologies, Inc. She testified that she held positions at two prior employers in the photonics industry before joining Lumicore, including a role as a senior engineer and a subsequent role as a director of photonic design. The names and dates of these prior employers are to be confirmed from the transcript.
Regarding Lumicore Technologies, Inc., Dr. Michaud testified that Lumicore was founded in 2015. She confirmed that she was not a member of the founding team. She joined Lumicore approximately two to three years after its founding, though the precise date of her hire is to be confirmed from the transcript. She was initially hired in a senior engineering capacity and was subsequently promoted to Chief Technology Officer, a position she has held for a period she described as "several years."
As CTO, Dr. Michaud described her scope of responsibilities as encompassing overall technical strategy, product development direction, research and development priorities, and oversight of Lumicore's engineering organization. She reports directly to Thomas "Tom" Kessler, the CEO and co-founder of Lumicore. She described her relationship with Kessler as collaborative and stated that she has regular one-on-one meetings with him on a weekly basis to discuss technical and product strategy.
Of particular relevance to this litigation, Dr. Michaud confirmed that her oversight extends to the product development teams responsible for the three accused product lines: the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR. She testified that these products are designed and developed by teams within Lumicore's Product Development organization, which is headed by Dr. Eric Dalmqvist, Vice President of Product Development. Dr. Dalmqvist reports to Dr. Michaud. Dr. Michaud described her collaboration with Dr. Dalmqvist as "close" and stated that she is regularly briefed on technical design decisions, participates in design reviews, and has final authority on major architectural choices for new product development programs.
When asked about the size of the engineering organization under her supervision, Dr. Michaud testified that Lumicore has approximately 870 total employees, of whom a substantial portion—she estimated "roughly half"—are in engineering or engineering-related roles. She was unable to provide a more precise breakdown during the deposition.
C. Technical Expertise
Dr. Michaud was questioned about her areas of technical expertise and their relevance to the patents-in-suit. She confirmed that her areas of technical expertise include, but are not limited to, the following areas that are directly relevant to the asserted patents in this case:
• Silicon photonics: Dr. Michaud testified that she has extensive expertise in the design and fabrication of silicon photonic integrated circuits, including waveguide design, modulator design, and photodetector integration on silicon substrates.
• Waveguide multiplexing: She testified to familiarity with various multiplexing architectures used in silicon photonic transceivers, including arrayed waveguide gratings ("AWGs"), Mach-Zehnder interferometer-based multiplexers, and echelle grating multiplexers. This expertise is directly relevant to the '847 Patent ("Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss").
• coherent optical transceivers: She confirmed expertise in the design and operation of coherent optical transceiver modules, including the integration of modulators, local oscillators, and coherent detection receivers on silicon photonic substrates. This expertise is relevant to the '193 Patent ("High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate").
• Thermal management of photonic integrated circuits: She described familiarity with thermal management techniques for photonic integrated circuits, including micro-channel heat sinks, thermoelectric coolers, and other thermal dissipation structures. This expertise is relevant to the '562 Patent ("Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks").
• Polarization-diverse grating couplers: She testified to knowledge of grating coupler designs used for coupling light between optical fibers and silicon photonic integrated circuits, including both one-dimensional and two-dimensional grating coupler architectures and polarization diversity schemes. This expertise is relevant to the '015 Patent ("Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers").
Regarding her familiarity with the state of the art in silicon-photonics transceiver design during the period relevant to the asserted patents, Dr. Michaud testified that she considers herself well-versed in the technical literature and industry developments in this field. She was asked specifically about her level of familiarity with the state of the art as of the following dates corresponding to the filing and priority dates of the asserted patents:
• '562 Patent: filed November 22, 2014
• '847 Patent: filed September 14, 2016
• '193 Patent: filed April 7, 2017 (with priority to Provisional Application No. 62/499,117)
• '015 Patent: filed August 30, 2019
Dr. Michaud confirmed that she was actively working in the silicon photonics field during the entirety of this period (2014–2019) and that she was familiar with the major developments, publications, and patent filings in the field during those years.
III. Knowledge of Optiwave Semiconductor Corp. and Its Patents
A. General Awareness of OWS
Dr. Michaud was questioned about her familiarity with Optiwave Semiconductor Corp. as a competitor in the silicon-photonics transceiver market. She acknowledged that she was generally aware of OWS as a company that designs and manufactures silicon-photonics transceiver modules for data-center applications. She confirmed awareness of OWS's principal product lines, including the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families. She described OWS as "one of the companies in the silicon photonics space" and acknowledged that OWS is a supplier of silicon-photonics transceiver modules for hyperscale data centers.
When asked whether she was aware that OWS is generally considered to be the third-largest U.S. supplier of silicon-photonics transceiver modules for hyperscale data centers, Dr. Michaud stated she was "not sure about specific rankings" but acknowledged that OWS is "a significant player in the market." When pressed further on whether she considered OWS to be a direct competitor to Lumicore at any point, she responded, "We're in the same general market segment, so yes, there is competitive overlap." This acknowledgment of direct competition is relevant to both the willful infringement and damages analyses, as discussed further in Section XI below.
B. Review of OWS Published Patent Applications — KEY ADMISSION
A central focus of the deposition was Dr. Michaud's knowledge of OWS's patent portfolio, particularly her awareness of OWS's published patent applications during the design and development of the accused products. This line of questioning yielded a critical admission that is highly significant for OWS's willful infringement theory.
Dr. Michaud admitted that she personally reviewed OWS's published patent application No. 2018/0123456 — the application corresponding to the '193 Patent, U.S. Patent No. 10,891,193, entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate" — during the LumiLink 400G-ZR+ design phase. She placed the timing of this review at approximately 2021 to 2022, during the product development cycle for the LumiLink 400G-ZR+, which launched in Q3 2022.
Regarding the context of this review, Dr. Michaud testified that she and members of her engineering team accessed OWS's published patent applications as part of a general "landscape review" of the silicon-photonics patent space. She characterized the review as a "routine technology survey" that she and her team conduct periodically to understand the competitive patent landscape and to stay abreast of developments in the field.
When asked who on her team brought the published application to her attention, Dr. Michaud stated that she could not recall precisely which engineer or team member first identified the OWS application for review. She acknowledged, however, that she personally reviewed the published application and was familiar with its content at the time.
Dr. Michaud was shown Michaud Exhibit 1, a copy of Published Application No. 2018/0123456. She confirmed that she recognized the document and that it was the same application she had reviewed during the 2021–2022 timeframe. She was asked to describe what she recalled about the content of the published application. She provided a general description of the subject matter—a coherent optical transceiver integrated on a silicon substrate—but testified that she did not believe the published application was relevant to Lumicore's design at the time she reviewed it.
When pressed on this point, Dr. Michaud stated: "We looked at it. I reviewed it. And my assessment at the time was that it described an approach that was different from what we were doing." She was asked whether she or anyone on her team prepared any written analysis, memorandum, or report regarding the published application. She responded that she did not recall whether any written analysis was prepared. She did not affirmatively deny that one exists, but simply stated she could not recall.
Significance for Willful Infringement. This admission is of substantial significance for OWS's willful infringement case under Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016). It establishes that Lumicore's engineering leadership—specifically the CTO herself—had actual knowledge of OWS's patent claims during the design of the first accused product, the LumiLink 400G-ZR+. This knowledge predates FairPoint Licensing Group, LLC's first licensing letter of January 15, 2023, by more than a year. The admission undermines any defense that Lumicore was unaware of OWS's patent claims before the FairPoint outreach.
This admission should be cross-referenced with the anticipated declaration of Melissa Chen, a former Lumicore engineer now employed at Veridian Photonics, Inc. Ms. Chen is expected to corroborate that the LumiLink 400G-ZR+ design team accessed and reviewed OWS's published patent applications during the product development cycle. OWS has issued a third-party subpoena to Ms. Chen dated January 22, 2025. Her testimony is now even more critical in light of Dr. Michaud's confirmation of the landscape review process and Chen's participation in it.
C. Knowledge of Issued Patents
Following the admission regarding the published application, Dr. Michaud was questioned extensively about her knowledge of the issued patents asserted in this case. Dr. Michaud denied having knowledge of the issued patents — specifically, U.S. Patent Nos. 10,234,847 (the '847 Patent), 10,891,193 (the '193 Patent), 9,678,562 (the '562 Patent), and 11,402,015 (the '015 Patent) — until FairPoint Licensing Group, LLC sent its first licensing and notice letter dated January 15, 2023, addressed to Lumicore's General Counsel, Raymond Bautista.
When asked whether she tracked the issuance status of published patent applications she had reviewed, Dr. Michaud responded that she did not. She testified that her review of published applications was conducted for the purpose of understanding the general technology landscape and that she did not have a practice of monitoring whether specific published applications subsequently issued as patents.
She was asked specifically whether anyone informed her that Published Application No. 2018/0123456 had matured into issued U.S. Patent No. 10,891,193. She responded that she did not recall anyone informing her of the patent's issuance. The '193 Patent issued on January 12, 2021 — more than a full year before the LumiLink 400G-ZR+ product launched in Q3 2022.
Assessment of Credibility. The credibility of this denial is subject to question for several reasons. First, the '193 Patent issued on January 12, 2021, well before the product launch, and during a period when Michaud's team was actively developing the LumiLink 400G-ZR+. Second, Michaud admitted to having personally reviewed the published application from which the patent issued. A reasonable person in her position — the CTO of a direct competitor in the same technology space — would be expected to monitor whether patent applications of competitive interest had issued as patents. Third, when asked whether Lumicore had any formal process for monitoring competitor patent issuances during the 2020–2022 timeframe, Dr. Michaud stated she was "not aware of a formal process." This response does not foreclose the possibility that informal monitoring occurred, and the absence of a formal process itself raises questions about Lumicore's patent diligence given its position as a competitor in the same market.
Defense counsel Kate Rourke interposed multiple objections during this line of questioning, citing objections as to form and relevance. The objections were noted on the record, but the witness was permitted to testify subject to the objections.
D. Knowledge of the '562 Patent (Acquired from Solara Optics)
Dr. Michaud was questioned about her awareness of Solara Optics, Inc. and its patent portfolio. She testified that she was generally aware of Solara Optics as a company that operated in the photonics space but stated that her familiarity was limited. She did not have specific knowledge of the asset purchase agreement dated June 15, 2018, by which OWS acquired the '562 Patent (U.S. Patent No. 9,678,562, "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks") and eleven (11) other patents from Solara for $34.5 million. She was not aware of the '562 Patent specifically prior to receiving information about the FairPoint Licensing Group's January 15, 2023 letter.
This testimony is generally consistent with what would be expected regarding the '562 Patent, which was originally filed by Solara Optics and subsequently acquired by OWS. The '562 Patent was not identified in any published application under OWS's name, and there is no direct evidence that Lumicore's technology landscape reviews would have surfaced a patent originally assigned to a different entity.
E. Receipt and Response to FairPoint Licensing Letters
Dr. Michaud was questioned about her knowledge of and involvement in the licensing communications between FairPoint Licensing Group, LLC (acting as OWS's licensing agent) and Lumicore.
Regarding the first FairPoint licensing letter, dated January 15, 2023, Dr. Michaud testified that she was made aware of the letter "within a few weeks" of its receipt by Raymond Bautista, Lumicore's General Counsel. She could not recall the precise date on which she first saw the letter or who forwarded it to her. She acknowledged that Bautista asked her to "take a look" at the patents identified in the letter — specifically, the '847, '193, and '562 Patents — and to provide a technical assessment of the patents in relation to Lumicore's products.
Dr. Michaud stated that she reviewed the patent claims "at a high level" and provided "initial impressions" to Bautista. At this point, defense counsel Rourke interposed a privilege objection and instructed the witness not to disclose the substance of her impressions or any communications she had with Bautista or other counsel regarding the patents or infringement risk. Dr. Michaud complied with the instruction. Despite efforts to probe the nature of her "initial impressions" without invading the privilege, the witness declined to provide any detail, and Rourke's instruction was firm and consistent.
Regarding FairPoint's second licensing letter, dated May 15, 2023, which added the '015 Patent to the list of asserted patents and expanded the scope of accused products to include the LumiLink 800G-DR8, Dr. Michaud acknowledged that she was made aware of the second letter but again could not recall specific timing of when she became aware of it.
Dr. Michaud confirmed that she was aware of an in-person licensing meeting held on April 20, 2023, in Austin, Texas, between Angela Reeves of FairPoint Licensing Group, Rebecca Tanaka (OWS's General Counsel), Raymond Bautista (Lumicore's General Counsel), and Kate Rourke of HVC. Dr. Michaud did not attend this meeting herself and was not asked to attend.
Regarding Lumicore's July 10, 2023 declination letter — in which Lumicore declined to take a license and stated that it had obtained "competent legal opinions" that its products do not infringe — Dr. Michaud testified that she did not participate in drafting the letter and was not asked to provide input on the letter. She was not questioned regarding the substance of any opinion-of-counsel letters referenced in the declination letter, as defense counsel instructed the witness not to answer such questions on the basis of attorney-client privilege and work product protection.
IV. LumiLink 400G-ZR+ Design and Development
A. Development Timeline
Dr. Michaud was questioned about the development timeline for the LumiLink 400G-ZR+ transceiver module, which is the first of the three accused products to have launched. The LumiLink 400G-ZR+ was launched commercially in Q3 2022.
Dr. Michaud described the development cycle for the LumiLink 400G-ZR+ as spanning approximately two years, from initial concept through production ramp. Although she was not entirely precise on the start date, her testimony placed the commencement of the development effort at approximately 2020 to 2021. She described the key milestones in the product development cycle as follows: initial concept and architecture definition; detailed design and simulation; photonic integrated circuit ("PIC") tape-out; fabrication and initial silicon bring-up; prototype assembly and characterization; qualification testing (including thermal cycling, vibration, humidity, and accelerated life testing); and production ramp.
Dr. Michaud testified that she served as the executive sponsor of the LumiLink 400G-ZR+ project and directly supervised the engineering leads responsible for the product's design and development. She described her level of involvement in the project as "hands-on," particularly during the architecture definition and design-review phases. She regularly attended design review meetings and made or approved key architectural decisions for the product.
B. Design Decisions Relating to Accused Features
Questioning focused at length on the specific design features of the LumiLink 400G-ZR+ that are at issue in this litigation.
Waveguide Multiplexer Architecture ('847 Patent). Dr. Michaud was questioned about the waveguide multiplexer architecture used in the LumiLink 400G-ZR+. The '847 Patent (U.S. Patent No. 10,234,847, "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss") claims a specific multi-channel waveguide multiplexer design with features directed to achieving low insertion loss in a silicon photonic platform. Dr. Michaud described the general multiplexer architecture employed in the LumiLink 400G-ZR+ at a high level, acknowledging that it uses a waveguide-based multiplexer to combine multiple wavelength channels for transmission. However, she was instructed by defense counsel not to answer questions regarding whether the design team considered alternative multiplexer architectures that might avoid the claims of the '847 Patent. Rourke objected on the grounds of attorney-client privilege and work product, asserting that any design-around analysis was conducted at the direction of counsel. The instruction was given firmly, and Dr. Michaud declined to answer several follow-up questions on this topic.
Thermal Management Structures ('562 Patent). Regarding the thermal management structures in the LumiLink 400G-ZR+ — corresponding to the claims of the '562 Patent (U.S. Patent No. 9,678,562, "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks") — Dr. Michaud acknowledged that the LumiLink 400G-ZR+ incorporates micro-channel heat-sink structures as part of its thermal management design. She characterized these structures as "industry-standard" and "well-known in the art," asserting that the use of micro-channel heat sinks in photonic integrated circuits is a common engineering approach that is widely practiced in the industry.
Dr. Michaud was shown Michaud Exhibit 9 (the Benchmark Semiconductor Analysis, LLC teardown report, dated December 12, 2022) and Michaud Exhibit 11 (teardown photographs of micro-channel heat-sink structures). She confirmed that the photographed structures appeared consistent with the LumiLink 400G-ZR+ product. However, she objected to certain characterizations of the features as described by the examining attorney, stating that the teardown photographs did not accurately represent the dimensions or configuration of all relevant structures.
Coherent Detection Module ('193 Patent). Dr. Michaud was questioned about the coherent detection module in the LumiLink 400G-ZR+. This component is relevant to Claims 3 and 7 of the '193 Patent (U.S. Patent No. 10,891,193, "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate"), for which OWS asserts infringement under the doctrine of equivalents. Dr. Michaud provided technical descriptions of the coherent detection module, including its integration of balanced photodetectors and a local oscillator for coherent signal detection. She disputed that the Lumicore design performs "substantially the same function in substantially the same way to achieve substantially the same result" as the patented element described in Claims 3 and 7. She characterized certain differences between the Lumicore implementation and the patent claims as "fundamental," though she was not specific about the nature of these differences beyond asserting that the signal mixing architecture differs from that described in the patent.
C. Role of Melissa Chen
Dr. Michaud was questioned about Melissa Chen and her role at Lumicore Technologies. Dr. Michaud confirmed that Ms. Chen was employed at Lumicore Technologies from approximately 2020 to 2024 and was a member of the LumiLink 400G-ZR+ design team. She described Ms. Chen's role as a senior photonic design engineer and characterized her as a "talented engineer" who contributed to the design effort.
When asked whether she recalled specific conversations with Ms. Chen regarding OWS's published patent applications, Dr. Michaud stated that she could not recall specific conversations. She acknowledged, however, that Ms. Chen was involved in the technology landscape review process that Dr. Michaud described earlier in the deposition — the process through which OWS's Published Application No. 2018/0123456 was identified and reviewed. Dr. Michaud testified that she did not specifically instruct Ms. Chen to review OWS applications; rather, she described the landscape review process as a team effort in which multiple engineers participated.
Ms. Chen is now employed at Veridian Photonics, Inc. OWS has issued a third-party subpoena to Ms. Chen, dated January 22, 2025, for deposition testimony. In light of Dr. Michaud's confirmation of Ms. Chen's participation in the landscape review process, Ms. Chen's deposition is now of heightened importance for corroboration of the willfulness evidence. See Section XII.E below for further discussion.
V. LumiLink 800G-DR8 Design and Development
A. Development Timeline
Dr. Michaud was questioned about the development timeline for the LumiLink 800G-DR8, the second of the three accused products. The LumiLink 800G-DR8 launched commercially in Q1 2023.
Dr. Michaud described the LumiLink 800G-DR8 as an "evolution" of the LumiLink 400G-ZR+ platform. She testified that the 800G-DR8 leverages much of the same underlying silicon photonic design as the 400G-ZR+, with enhancements to support higher bandwidth and a different reach profile. The development timelines for the two products overlapped to a significant degree.
A key issue explored during testimony was the chronological overlap between the 800G-DR8 development and FairPoint Licensing Group's first licensing letter, dated January 15, 2023. Dr. Michaud testified that the 800G-DR8 design was "substantially complete" before receipt of the FairPoint letter. She stated that by January 2023, the product was in the qualification and production-ramp phases, not in the design phase. She was not questioned extensively on the precise definition of "substantially complete," and this characterization should be tested against the document record and further fact discovery.
B. Design Features Relevant to All Four Asserted Patents
The LumiLink 800G-DR8 is accused of infringing all four asserted patents: the '847 Patent, the '193 Patent, the '562 Patent, and the '015 Patent. As such, a broader range of design features was explored than for the 400G-ZR+.
Of particular significance is the testimony regarding the polarization-diverse grating coupler in the 800G-DR8, which is relevant to the '015 Patent (U.S. Patent No. 11,402,015, "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers"). Dr. Michaud acknowledged that the 800G-DR8 includes a polarization-diverse grating coupler as part of its fiber-coupling architecture. However, she contested that its design falls within the scope of the patent claims. She described the grating coupler used in the 800G-DR8 as a "one-dimensional grating with a separate polarization rotator," which she distinguished from the "two-dimensional sub-wavelength grating" that she characterized as being claimed in the '015 Patent.
This distinction is directly at issue in the doctrine of equivalents analysis for Claim 12 of the '015 Patent. OWS asserts infringement of Claim 12 under the doctrine of equivalents for precisely this design variation — arguing that a one-dimensional grating with a separate polarization rotator performs substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed two-dimensional sub-wavelength grating. Dr. Michaud's testimony regarding this distinction will be central to the briefing on this issue and should be provided to Dr. Caroline Ashford (OWS's infringement expert) for analysis.
C. No Design-Around Undertaken After Notice
Dr. Michaud was asked whether, after receipt of the FairPoint licensing letters in January and May 2023, Lumicore undertook any design-around effort or evaluation of non-infringing alternatives for the LumiLink 800G-DR8. She testified that she was "not aware of any formal design-around study" for the 800G-DR8 product.
This testimony is notable and potentially damaging to Lumicore's defense posture. It is consistent with the testimony given by Raymond Bautista (Lumicore's General Counsel) in his deposition on December 3, 2024, where Mr. Bautista admitted that no formal design-around analysis was commissioned before the launch of the LumiEdge 1600G-LR. Taken together, these two depositions suggest that Lumicore did not undertake any formal effort to design around OWS's asserted patents, even after receiving explicit notice of the patents and declining to take a license. This fact pattern is relevant to the willful infringement analysis under Halo and may also bear on OWS's request for enhanced damages.
VI. LumiEdge 1600G-LR Design and Development
A. Development Timeline and Post-Notice Launch
The LumiEdge 1600G-LR is the third accused product and the most recently launched. The LumiEdge 1600G-LR launched in Q4 2023. This launch date is significant because it occurred well after both FairPoint licensing letters (January 15, 2023 and May 15, 2023), after the in-person licensing meeting on April 20, 2023, and after Lumicore's July 10, 2023 declination letter in which Lumicore declined to take a license and asserted that it had obtained "competent legal opinions" of non-infringement.
Dr. Michaud confirmed that she oversaw the development of the LumiEdge 1600G-LR product in her capacity as CTO. She acknowledged that the 1600G-LR was a new product development effort, not merely an incremental iteration or minor revision of an existing product. She described the 1600G-LR as designed to address the emerging market demand for 1.6-terabit optical connectivity in hyperscale data-center environments, incorporating a new transceiver architecture optimized for long-reach applications.
Significance for Willful Infringement. Lumicore's decision to develop and launch a new accused product after receiving notice of OWS's asserted patents, after declining to take a license, and after asserting reliance on "competent legal opinions" that it has refused to produce, significantly strengthens OWS's willful infringement case under the Halo framework. The post-notice launch of the LumiEdge 1600G-LR demonstrates that Lumicore's alleged infringement is not the result of pre-notice conduct alone; rather, Lumicore made a deliberate commercial decision to introduce a new product into the market despite having been put on notice of OWS's patent rights. This fact will feature prominently in OWS's willfulness briefing.
B. Accused Features
The LumiEdge 1600G-LR is accused of infringing the '193 Patent and the '015 Patent. Dr. Michaud was questioned about the product's coherent transceiver architecture (relevant to the '193 Patent) and its grating coupler design (relevant to the '015 Patent).
Dr. Michaud provided testimony regarding the general design architecture of the LumiEdge 1600G-LR, maintaining that the product uses "different approaches" from those described in the OWS patents. However, she declined to provide specific technical detail on certain design features, citing instruction from counsel not to disclose proprietary design details beyond what has been produced in discovery. Defense counsel Rourke supported this instruction, asserting that certain design details are protected as trade secrets and that the appropriate vehicle for technical comparison is the expert discovery process.
The limited detail provided by Dr. Michaud during the deposition on the 1600G-LR's specific design features means that further technical comparison will depend on the discovery record (including the production of source code and design files designated Highly Confidential — Source Code) and on OWS's expert analysis by Dr. Ashford.
C. Non-Infringing Alternatives — KEY TESTIMONY
One of the most significant portions of the deposition concerned Dr. Michaud's inability to identify any specific non-infringing alternatives for the accused features in any of the three accused product lines.
When asked directly whether there existed commercially viable designs for a silicon-photonics transceiver module that did not use (a) waveguide multiplexer structures of the type described in the '847 Patent, (b) micro-channel heat sinks of the type described in the '562 Patent, (c) coherent detection modules of the type described in the '193 Patent, or (d) polarization-diverse grating couplers of the type described in the '015 Patent, Dr. Michaud was unable to identify any specific alternative architecture that would meet the same performance specifications.
She responded to the question by stating that "there are always different ways to design a product," but when pressed to name a specific alternative, she was unable to do so. She did not identify any particular multiplexer architecture, thermal management approach, coherent detection configuration, or grating coupler design that could serve as a commercially viable alternative while meeting the performance, cost, and form-factor requirements of the accused products.
Defense counsel Rourke objected to the question as overbroad and calling for speculation. The witness was permitted to answer subject to the objection.
Significance for Damages (Panduit Factor 2). Dr. Michaud's inability to identify non-infringing alternatives is a critical data point for OWS's Panduit lost-profits analysis. The Panduit test requires the patent holder to establish, among other factors, the absence of acceptable non-infringing substitutes. Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152 (6th Cir. 1978). Dr. Michaud's testimony — from the CTO of the accused infringer, who has deep technical expertise in exactly the relevant technology — supports OWS's position that no commercially viable non-infringing alternatives existed for the accused product features.
This testimony should be promptly provided to Dr. Lawrence Keating of Meridian Economic Consulting Group, LLC, OWS's damages expert, for incorporation into his damages expert report, which is due June 15, 2025.
VII. Prior Art and Invalidity
A. Prior Art Awareness
Dr. Michaud was questioned about her familiarity with specific prior-art references cited in Lumicore's invalidity contentions, which were served on October 14, 2024, and cite twenty-three (23) references in total across the four asserted patents.
Dr. Michaud acknowledged general familiarity with the following references:
• Takahashi et al., "Dense WDM Silicon Photonic MUX," IEEE Photonics Technology Letters (March 2014). Lumicore cites this article against the '847 Patent for anticipation under 35 U.S.C. § 102. Dr. Michaud testified that she was familiar with the Takahashi article and described it as a "well-known paper" in the silicon photonics field. She was shown Michaud Exhibit 26, a copy of the article, and confirmed she had read it previously.
• U.S. Patent No. 8,412,007 (Bergmann), issued April 2, 2013. Lumicore cites this patent against the '562 Patent for obviousness under 35 U.S.C. § 103 in combination with other references. Dr. Michaud testified that she was aware of the Bergmann patent and had reviewed it at some point, though she was unable to specify when she had first encountered it. She was shown Michaud Exhibit 27, a copy of the Bergmann patent.
Dr. Michaud was less familiar with certain other references cited in the invalidity contentions. Specifically, she stated that she was not directly familiar with PCT/EP2015/071234 (Simonsen) or with the Dr. Li Wei conference paper entitled "Thermal Solutions for PICs," presented at OFC 2013. She did not deny the existence of these references but stated that she had not personally reviewed them.
B. Lumicore Internal Design Documents (Prior-Conception Defense)
A significant line of questioning addressed Lumicore's prior-conception defense against the '015 Patent. Lumicore's invalidity contentions assert that Lumicore engineers independently conceived of the polarization-diverse grating coupler design claimed in the '015 Patent prior to the patent's priority date. This defense relies on internal Lumicore design documents dated 2016–2017.
Dr. Michaud was questioned about these internal design documents, which were marked as Michaud Exhibits 19 through 22. She acknowledged the existence of internal Lumicore design notebooks and engineering documents from the 2016–2017 period. However, her testimony regarding the content of these documents was notably vague and unsubstantiated.
When asked whether the documents describe a polarization-diverse grating coupler with the specific features claimed in the '015 Patent — which was filed on August 30, 2019, and claims priority to Provisional Application No. 62/499,117, filed April 7, 2017 — Dr. Michaud could not confirm that the documents describe such a design. She testified that she was not the author of the documents and was not directly involved in the work described in them during the 2016–2017 period. She referred questions about the specific technical content of the documents to Dr. Eric Dalmqvist, Vice President of Product Development, who she identified as more knowledgeable about the work reflected in the documents.
Significance for Validity. Dr. Michaud's inability to substantiate the content of the 2016–2017 design documents is significant. It undermines Lumicore's prior-conception defense against the '015 Patent in two respects. First, if the CTO of the company cannot confirm that the documents describe the claimed features, the evidentiary value of the documents is weakened. Second, the prior-conception defense requires corroboration under Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368 (Fed. Cir. 1998). Michaud's referral of all substantive questions to Dr. Dalmqvist raises the possibility that the prior-conception defense may lack adequate corroboration from witnesses other than the alleged inventor(s).
This testimony supports OWS's position that Lumicore's prior-conception defense lacks corroboration and should be tested through the motion practice. OWS intends to press this argument in its anticipated motion for partial summary judgment on the validity of the '015 Patent, which is due September 15, 2025.
VIII. Competitive Dynamics and Market Information
A. Market Competition with OWS
Dr. Michaud was questioned about the competitive dynamics between Lumicore and OWS in the silicon-photonics transceiver market. Her testimony on this topic was generally favorable to OWS's position regarding market competition and the economic harm caused by the alleged infringement.
Dr. Michaud acknowledged that Lumicore and OWS compete for the same hyperscale data-center customers. She confirmed that Lumicore's LumiLink 400G-ZR+ and OWS's OWS-400ZR are competing products that serve the same market segment and that both companies have bid on contracts with the same customers. When asked about specific customer relationships, she was shown certain customer-specific sales data that had been designated Highly Confidential — Attorneys' Eyes Only under the three-tier stipulated protective order entered by the Court. She confirmed that Lumicore has sold accused products to customers who are also served by OWS.
Dr. Michaud acknowledged awareness that Lumicore's entry into the 400G-ZR transceiver market in Q3 2022 coincided with a decline in average selling prices ("ASPs") in the 400G-ZR transceiver segment. She could not quantify the extent to which Lumicore's market entry affected pricing but acknowledged that "competitive dynamics" were a factor in the ASP decline. She did not deny that Lumicore's entry contributed to pricing pressure, though she attributed ASP declines to multiple factors, including increased competition from other market participants and natural price maturation of the technology over time.
This testimony is relevant to OWS's price-erosion analysis, which documents an 18.7% decline in ASPs from Q3 2022 to Q4 2023 for 400G-ZR transceiver modules. OWS's damages expert, Dr. Keating, is expected to rely on this testimony in constructing the price-erosion component of his damages analysis.
B. Product Revenue
Dr. Michaud was not designated as the primary witness for financial matters — Lumicore has indicated that its Chief Financial Officer, Janet Moreno, is the appropriate deposition witness for financial data. Nonetheless, Dr. Michaud confirmed at a high level that the accused products constitute a significant portion of Lumicore's total revenue. She acknowledged that Lumicore's fiscal year 2023 total revenue was approximately $312.6 million, a figure that is consistent with Lumicore's public 10-K filing with the U.S. Securities and Exchange Commission.
She was asked whether the accused products — the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR — generated the majority of Lumicore's product revenue. She did not dispute this characterization, stating that she was not the "right person to speak to financial specifics" but acknowledging that "our transceiver products are a significant revenue driver for the company."
IX. Objections and Privilege Issues
Defense counsel Kate Rourke interposed numerous objections throughout the deposition, primarily on grounds of form, relevance, and privilege. The objections are noted on the record and are summarized below in terms of their significance to the pending motions and litigation strategy.
Privilege Objections and Instructions Not to Answer. The most significant objections concerned privilege assertions on the following topics:
1. Communications with Counsel Regarding OWS Patents. Dr. Michaud was instructed not to answer any questions regarding the substance of her communications with Lumicore's legal counsel — including Raymond Bautista (General Counsel), Kate Rourke, and other attorneys at Hawthorne Vega & Cruz LLP — concerning the OWS patents or infringement risk. This instruction was broad and was maintained consistently throughout the deposition.
2. Opinion-of-Counsel Letters. Rourke instructed the witness not to answer questions regarding the substance of any opinion-of-counsel letters or legal analyses that Dr. Michaud may have reviewed. This instruction was given in the context of questioning about Michaud's review of the asserted patent claims after receipt of the FairPoint licensing letters and in the context of Lumicore's July 10, 2023 declination letter, which referenced "competent legal opinions."
3. Internal Legal Strategy. Rourke objected to and instructed the witness not to answer questions about internal legal strategy discussions regarding Lumicore's response to the FairPoint licensing outreach, including any discussions about whether to take a license, whether to engage in design-around efforts, or whether to contest the validity of the asserted patents.
4. Design-Around Analyses. Rourke objected to and instructed the witness not to answer questions about any design-around analyses that may have been undertaken at the direction of counsel. She asserted work-product protection and attorney-client privilege as the bases for this instruction.
Relevance to Pending Motion to Compel. These privilege assertions are directly relevant to OWS's pending Motion to Compel Production of Opinion-of-Counsel Letters (D.E. 38, filed October 21, 2024). In that motion, OWS argues that Lumicore waived attorney-client privilege and work-product protection over its opinion-of-counsel letters by affirmatively referencing "competent legal opinions" in the July 10, 2023 declination letter. The blanket privilege instructions given during the Michaud deposition — particularly the instruction not to answer questions about the patent-claim review that Michaud admitted conducting "at a high level" after receipt of the FairPoint letter — should be added to the record in support of the pending motion. See Section XII.D below for recommended follow-up actions.
X. Exhibits Marked During Deposition
The following exhibits were marked during the deposition of Dr. Sandra Michaud:
XI. Key Takeaways and Litigation Impact Assessment
A. Willful Infringement
Dr. Michaud's admission that she personally reviewed OWS Published Application No. 2018/0123456 during the LumiLink 400G-ZR+ design phase (2021–2022) is the single most significant piece of evidence to emerge from this deposition. This admission establishes that Lumicore's senior engineering leadership — the CTO herself — had actual access to OWS's patent claims before the first accused product launched in Q3 2022. Although Dr. Michaud denied knowledge of the issued '193 Patent until the FairPoint letter of January 2023, the credibility of that denial is subject to challenge, as discussed in Section III.C above.
This admission, combined with the following additional facts in the record, creates a compelling willfulness narrative under the Halo framework:
• Lumicore continued to sell the LumiLink 400G-ZR+ and LumiLink 800G-DR8 after receiving the FairPoint licensing letters in January and May 2023.
• Lumicore launched a new accused product, the LumiEdge 1600G-LR, in Q4 2023 — after receiving both FairPoint letters, after the in-person licensing meeting of April 20, 2023, and after Lumicore's July 10, 2023 declination letter.
• Lumicore did not undertake any formal design-around study for any of the three accused products.
• Lumicore has refused to produce the "competent legal opinions" referenced in its July 10, 2023 declination letter, asserting attorney-client privilege and work-product protection.
The timeline establishes that Lumicore's engineering leadership had access to OWS's patent claims well before the first accused product launched, undermining any defense of innocent infringement or good-faith belief of non-infringement.
Cross-References: Timeline of Notice and Willfulness Evidence (internal document dated April 12, 2024); Willful Infringement Memorandum (internal analysis dated April 10, 2024); anticipated Declaration of Melissa Chen.
B. Infringement — Doctrine of Equivalents
Dr. Michaud's testimony provided substantive content for the doctrine of equivalents analysis with respect to two of the asserted patents.
First, her testimony regarding the LumiLink 800G-DR8's grating coupler design — in which she described the design as a "one-dimensional grating with a separate polarization rotator" and distinguished it from the "two-dimensional sub-wavelength grating" claimed in the '015 Patent — will be central to the doctrine of equivalents analysis for Claim 12 of the '015 Patent. OWS's position is that this design variation is insubstantial and that the Lumicore design performs the same function (coupling light between an optical fiber and a photonic integrated circuit while handling both polarization states), in the same way (using a grating structure with a polarization diversity mechanism), to achieve the same result (efficient broadband optical coupling with polarization independence). Dr. Michaud's technical description of the design, while framed as a distinction, provides the factual foundation for the function-way-result analysis.
Second, her testimony regarding the coherent detection module in the LumiLink 400G-ZR+ is relevant to the doctrine of equivalents analysis for Claims 3 and 7 of the '193 Patent. Her characterization of the differences as "fundamental" will need to be challenged through expert testimony from Dr. Ashford.
Cross-References: Doctrine of Equivalents Analysis Memorandum (internal, September 5, 2024); Prosecution History Estoppel Analyses for '193 Patent (October 10, 2024) and '015 Patent (October 12, 2024).
C. Non-Infringing Alternatives (Damages Impact)
Dr. Michaud's failure to identify any specific non-infringing alternatives for the accused features in any of the three accused product lines is a critical data point for OWS's Panduit lost-profits analysis. As the CTO of the accused infringer and a recognized expert in silicon photonics, Dr. Michaud was in the best position to identify alternative designs that could have been used to avoid the asserted patents. Her inability to do so — despite acknowledging that "there are always different ways to design a product" — strongly supports the second Panduit factor: the absence of acceptable non-infringing substitutes.
This testimony should be promptly provided to Dr. Lawrence Keating of Meridian Economic Consulting Group, LLC, for incorporation into his damages expert report, which is due June 15, 2025. Dr. Keating should be advised that this testimony came from the defendant's own CTO and should be featured prominently in his analysis.
Cross-References: Lost Profits — Panduit Factor Analysis (internal, May 2024); Market Share Displacement Analysis (internal, June 2024).
D. Validity — Prior-Conception Defense Weakness
Dr. Michaud's vague and unsubstantiated testimony regarding Lumicore's 2016–2017 internal design documents weakens Lumicore's prior-conception defense against the '015 Patent. Her inability to confirm that the documents describe a polarization-diverse grating coupler with the specific features claimed in the '015 Patent, combined with her referral of all substantive questions to Dr. Eric Dalmqvist, raises significant corroboration concerns. If the defense's best witness on the content of these documents is Dr. Dalmqvist alone — without corroboration from the CTO or other engineers — the defense may fail under the Federal Circuit's corroboration requirement for prior-conception evidence.
Cross-References: Invalidity Contentions Analysis — '015 Patent (internal, November 7, 2024); draft Motion for Partial Summary Judgment — Validity of '015 Patent (due September 15, 2025).
E. Competitive Dynamics
Dr. Michaud's acknowledgment that Lumicore and OWS compete directly for the same hyperscale data-center customers supports multiple aspects of OWS's case:
• Irreparable Harm for Injunctive Relief. The direct competitive relationship and customer overlap support OWS's argument that it has suffered and continues to suffer irreparable harm from Lumicore's infringement, a necessary showing for preliminary or permanent injunctive relief.
• Market Share Displacement. The customer overlap and competitive bidding testimony support the market-share displacement component of OWS's lost-profits theory under the first Panduit factor (demand for the patented product).
• Price Erosion. Dr. Michaud's acknowledgment that Lumicore's market entry coincided with a decline in ASPs, combined with her acknowledgment that "competitive dynamics" contributed to this decline, supports OWS's price-erosion analysis. OWS's internal analysis documents an 18.7% ASP decline from Q3 2022 to Q4 2023 for 400G-ZR transceiver modules.
Cross-References: Irreparable Harm Evidence Compilation (internal, September 2024); Price Erosion Analysis (internal, January 2025); Market Analysis: Accused Products and OWS Competitive Impact (internal, October 2024).
XII. Follow-Up Actions
A. Deposition Transcript
The final certified transcript is expected from the court reporter within thirty (30) days of the deposition date. The team should calendar the deadline for Dr. Michaud's errata review (30 days from the date the transcript is made available to defense counsel under the rules). Upon receipt of the finalized transcript, the team should:
1. Review the transcript for accuracy against deposition notes.
2. Prepare an errata review and flag any material changes made by the witness.
3. Insert final transcript page-and-line citations into the Appendix (Section XIII) of this memorandum.
4. Circulate the updated memorandum with citations to the distribution list.
B. Designation for Use at Trial
Upon receipt of the finalized transcript, the team should identify key excerpts for potential use at trial, whether by way of deposition designations for the jury or for impeachment purposes. Priority excerpts include:
• Admission of reviewing Published Application No. 2018/0123456 during the LumiLink 400G-ZR+ design phase (2021–2022)
• Denial of knowledge of the issued patents until receipt of the FairPoint letter (January 15, 2023)
• Inability to identify any specific non-infringing alternatives for the accused product features
• Confirmation of competitive overlap with OWS, including bidding on the same customers
• Confirmation of the post-notice launch of the LumiEdge 1600G-LR in Q4 2023
• Characterization of micro-channel heat sinks as "industry-standard" (for use in validity briefing or cross-examination)
• Testimony regarding the 800G-DR8 grating coupler design distinction (for use in DOE analysis)
• Acknowledgment that no formal design-around study was undertaken
The team should prepare a Deposition Designation and Counter-Designation Chart for the Michaud deposition as part of the trial preparation process. This chart should be coordinated with the designation charts for the other fact depositions in the case.
C. Expert Witness Coordination
Key transcript excerpts from the Michaud deposition should be provided to OWS's retained expert witnesses as follows:
1. Dr. Caroline Ashford (Northfield Institute of Technology) — OWS's infringement expert. Dr. Ashford should receive excerpts relating to:
• Michaud's description of the waveguide multiplexer architecture in the LumiLink 400G-ZR+ (relevant to the '847 Patent)
• Michaud's description of the coherent detection module in the LumiLink 400G-ZR+ (relevant to Claims 3 and 7 of the '193 Patent, DOE analysis)
• Michaud's description of the grating coupler design in the LumiLink 800G-DR8 (relevant to Claim 12 of the '015 Patent, DOE analysis)
• Michaud's characterization of the micro-channel heat-sink structures as "industry-standard" (relevant to the '562 Patent)
• Michaud's characterization of alleged differences between the Lumicore designs and the patent claims
2. Dr. Lawrence Keating (Meridian Economic Consulting Group, LLC) — OWS's damages expert. Dr. Keating should receive excerpts relating to:
• Michaud's inability to identify non-infringing alternatives (Panduit factor 2)
• Michaud's testimony regarding competitive dynamics and customer overlap (Panduit factor 1 and price erosion)
• Michaud's acknowledgment that the accused products constitute a significant portion of Lumicore's revenue
• Michaud's testimony regarding ASP decline following Lumicore's market entry
3. Gregory Falk (industry expert) — OWS's industry expert witness. Mr. Falk should receive excerpts relating to:
• Michaud's testimony regarding the competitive landscape and Lumicore's market position
• Michaud's acknowledgment of OWS as a competitor