UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S FIRST SET OF REQUESTS FOR ADMISSION TO DEFENDANT LUMICORE TECHNOLOGIES, INC. (NOS. 1–40)
Served Pursuant to Rule 36 of the Federal Rules of Civil Procedure Date Served: September 23, 2024
Plaintiff Optiwave Semiconductor Corp. ("OWS"), by and through its attorneys of record, Calderwood & Harkness LLP and local counsel Whitmore & Callahan LLP, hereby requests that Defendant Lumicore Technologies, Inc. ("Lumicore"), pursuant to Rule 36 of the Federal Rules of Civil Procedure, admit the truth of each of the following matters within thirty (30) days of service of these Requests, or within such other time as may be ordered by the Court. These Requests are directed to Lumicore Technologies, Inc., through its counsel of record, Hawthorne Vega & Cruz LLP, 600 Congress Avenue, Suite 2400, Austin, TX 78701 (Attn: Catherine "Kate" Rourke); and local counsel Trask Eddington LLP, 425 East Front Street, Suite 300, Tyler, TX 75701 (Attn: Maria Garza). In accordance with Rule 36(a)(4), each matter is deemed admitted unless, within thirty (30) days after being served, Lumicore serves upon Plaintiff a written answer or objection addressed to each matter.
DEFINITIONS
For purposes of these Requests for Admission, the following terms shall have the meanings set forth below:
1. "OWS" or "Plaintiff" means Optiwave Semiconductor Corp., a Delaware corporation with its principal place of business at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, CA 95054, together with its current and former officers, directors, employees, agents, consultants, contractors, and representatives, whether acting in an individual or representative capacity.
2. "Lumicore" or "Defendant" means Lumicore Technologies, Inc., a Delaware corporation with its principal place of business at 9200 Spectrum Boulevard, Building C, Austin, TX 78759, together with its current and former officers, directors, employees, agents, consultants, contractors, subsidiaries, affiliates, and representatives, whether acting in an individual or representative capacity.
3. "Asserted Patents" means, collectively, 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"), each as more particularly described herein.
4. "'847 Patent" means U.S. Patent No. 10,234,847, entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss," filed September 14, 2016, and issued by the United States Patent and Trademark Office on March 19, 2019, originally assigned to Optiwave Semiconductor Corp.
5. "'193 Patent" means U.S. Patent No. 10,891,193, entitled "High-Bandwidth coherent Optical Transceiver Integrated on Silicon Substrate," filed April 7, 2017, and issued by the United States Patent and Trademark Office on January 12, 2021, originally assigned to Optiwave Semiconductor Corp.
6. "'562 Patent" means U.S. Patent No. 9,678,562, entitled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks," filed November 22, 2014, and issued by the United States Patent and Trademark Office on June 13, 2017, originally assigned to Solara Optics, Inc., and subsequently assigned to Optiwave Semiconductor Corp. pursuant to an Asset Purchase Agreement dated June 15, 2018.
7. "'015 Patent" means U.S. Patent No. 11,402,015, entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," filed August 30, 2019, and issued by the United States Patent and Trademark Office on August 2, 2022, originally assigned to Optiwave Semiconductor Corp.
8. "Accused Products" means the LumiLink 400G-ZR+ transceiver module, the LumiLink 800G-DR8 transceiver module, and the LumiEdge 1600G-LR transceiver module, including all versions, variants, revisions, and substantially similar products thereof, that have been or are being manufactured, used, sold, offered for sale, or imported into the United States by or on behalf of Lumicore.
9. "LumiLink 400G-ZR+" means Lumicore's LumiLink 400G-ZR+ coherent transceiver module, commercially launched in the third quarter of 2022 (Q3 2022), and all versions, variants, and revisions thereof.
10. "LumiLink 800G-DR8" means Lumicore's LumiLink 800G-DR8 transceiver module, commercially launched in the first quarter of 2023 (Q1 2023), and all versions, variants, and revisions thereof.
11. "LumiEdge 1600G-LR" means Lumicore's LumiEdge 1600G-LR transceiver module, commercially launched in the fourth quarter of 2023 (Q4 2023), and all versions, variants, and revisions thereof.
12. "FairPoint" means FairPoint Licensing Group, LLC, a limited liability company with its principal place of business at 500 Sansome Street, Suite 1400, San Francisco, CA 94111, which has served as OWS's licensing agent with respect to the Asserted Patents.
13. "Solara Optics" means Solara Optics, Inc., a defunct California corporation and the original assignee of the '562 Patent.
14. "APA" means the Asset Purchase Agreement between Optiwave Semiconductor Corp. and Solara Optics, Inc. dated June 15, 2018, pursuant to which OWS acquired, inter alia, the '562 Patent and eleven (11) other patents from Solara Optics for a total purchase price of $34.5 million, together with all exhibits, schedules, amendments, and ancillary agreements related thereto.
15. "Provisional Application" means U.S. Provisional Application No. 62/499,117, filed April 7, 2017, from which the '193 Patent and the '015 Patent each claim priority.
16. "Document" has the meaning set forth in Federal Rule of Civil Procedure 34(a) and Local Rule CV-26, and includes all electronically stored information ("ESI") as contemplated by the ESI Protocol Agreement entered in this action on August 15, 2024 (D.E. 28).
17. "Person" means any natural person, corporation, partnership, limited liability company, joint venture, association, governmental entity, or any other legal or business entity, whether or not formally organized.
18. "You," "Your," and "Yours" refer to Lumicore Technologies, Inc. and its counsel, agents, and representatives.
INSTRUCTIONS
The following instructions apply to each of the Requests for Admission set forth below:
1. Each Request for Admission shall be responded to separately and fully in writing under oath, in accordance with Rule 36(a) of the Federal Rules of Civil Procedure. A response must specifically admit or deny the matter, or set forth in detail the reasons why the answering party cannot truthfully admit or deny the matter.
2. If Lumicore cannot truthfully admit or deny a Request in its entirety, Lumicore shall, pursuant to Rule 36(a)(4), specify so much of the matter as is true and qualify or deny the remainder. An answering party may assert lack of knowledge or information as a reason for failing to admit or deny only if the party states that it has made reasonable inquiry and that the information it knows or can readily obtain is insufficient to enable it to admit or deny.
3. If Lumicore objects to any Request on any ground, Lumicore must state the ground for the objection with specificity and must nonetheless admit or deny the Request to the extent not objectionable.
4. These Requests are subject to the Stipulated Protective Order entered in this action on August 12, 2024 (D.E. 30), including the three-tier confidentiality designations established therein (i.e., Confidential, Highly Confidential – Attorneys' Eyes Only, and Highly Confidential – Source Code). To the extent any response requires the disclosure of information designated under any tier of the Protective Order, Lumicore shall mark its responses accordingly.
5. These Requests are continuing in nature pursuant to Federal Rule of Civil Procedure 26(e). If, after serving initial responses, Lumicore obtains additional information or knowledge that renders a prior response incomplete or incorrect, Lumicore is obligated to amend or supplement its responses in a timely manner.
6. Words used in the singular shall include the plural, and words used in the plural shall include the singular, as context requires. The terms "and" and "or" shall be construed disjunctively or conjunctively as necessary to make each Request inclusive rather than exclusive.
7. "Including" means "including but not limited to" and shall not be construed to limit the scope of any Request.
REQUESTS FOR ADMISSION
A. Authenticity of Patent Documents
Request for Admission No. 1:
Admit that the document attached to OWS's Original Complaint (D.E. 1) as Exhibit A is a true and correct copy of U.S. Patent No. 10,234,847, entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss," filed September 14, 2016, and issued by the United States Patent and Trademark Office on March 19, 2019.
Request for Admission No. 2:
Admit that the document attached to OWS's Original Complaint (D.E. 1) as Exhibit B is a true and correct copy of U.S. Patent No. 10,891,193, entitled "High-Bandwidth coherent Optical Transceiver Integrated on Silicon Substrate," filed April 7, 2017, and issued by the United States Patent and Trademark Office on January 12, 2021.
Request for Admission No. 3:
Admit that the document attached to OWS's Original Complaint (D.E. 1) as Exhibit C is a true and correct copy of U.S. Patent No. 9,678,562, entitled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks," filed November 22, 2014, and issued by the United States Patent and Trademark Office on June 13, 2017.
Request for Admission No. 4:
Admit that the document attached to OWS's Original Complaint (D.E. 1) as Exhibit D is a true and correct copy of U.S. Patent No. 11,402,015, entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," filed August 30, 2019, and issued by the United States Patent and Trademark Office on August 2, 2022.
Request for Admission No. 5:
Admit that U.S. Patent Nos. 10,234,847 and 9,678,562 are in the same patent family and share a continuation relationship.
Request for Admission No. 6:
Admit that U.S. Patent Nos. 10,891,193 and 11,402,015 each claim the benefit of the filing date of U.S. Provisional Application No. 62/499,117, filed April 7, 2017.
Request for Admission No. 7:
Admit that each of the Asserted Patents — i.e., U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015 — is a utility patent duly and regularly issued by the United States Patent and Trademark Office.
Request for Admission No. 8:
Admit that all maintenance fees required under 35 U.S.C. § 41 for each of the Asserted Patents have been paid and are current as of the date of service of this Request.
B. Chain of Title / Ownership
Request for Admission No. 9:
Admit that Optiwave Semiconductor Corp. is the current owner by assignment of U.S. Patent No. 10,234,847, and that the assignment of such patent to OWS has been recorded with the United States Patent and Trademark Office.
Request for Admission No. 10:
Admit that Optiwave Semiconductor Corp. is the current owner by assignment of U.S. Patent No. 10,891,193, and that the assignment of such patent to OWS has been recorded with the United States Patent and Trademark Office.
Request for Admission No. 11:
Admit that Solara Optics, Inc. was the original assignee of U.S. Patent No. 9,678,562, and that ownership of the '562 Patent was transferred from Solara Optics, Inc. to Optiwave Semiconductor Corp. pursuant to an Asset Purchase Agreement dated June 15, 2018, under which OWS acquired the '562 Patent and eleven (11) other patents from Solara Optics for a total purchase price of $34.5 million.
Request for Admission No. 12:
Admit that Optiwave Semiconductor Corp. is the current owner by assignment of U.S. Patent No. 11,402,015, and that the assignment of such patent to OWS has been recorded with the United States Patent and Trademark Office.
Request for Admission No. 13:
Admit that Optiwave Semiconductor Corp. has standing to assert the Asserted Patents in this action and has the exclusive right to sue for infringement of each of the Asserted Patents, including the right to recover damages and to seek injunctive relief.
C. Patent Marking
Request for Admission No. 14:
Admit that OWS marks or has marked at least some of its commercial products, including its OWS-400ZR and OWS-800XR transceiver module families, with one or more of the Asserted Patent numbers, or alternatively with a virtual-marking URL pursuant to 35 U.S.C. § 287(a) directing the public to patent-number listings for those products.
Request for Admission No. 15:
Admit that Lumicore does not mark, and has never marked, any of the Accused Products — including the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR — with any of the Asserted Patent numbers.
Request for Admission No. 16:
Admit that prior to filing this action, OWS, through its licensing agent FairPoint Licensing Group, LLC, provided actual notice to Lumicore of the Asserted Patents and OWS's allegations of infringement by letter dated January 15, 2023, and by supplemental letter dated May 15, 2023, and that such letters constituted actual notice of the Asserted Patents under 35 U.S.C. § 287(a).
D. Receipt of Licensing Letters and Pre-Suit Communications
Request for Admission No. 17:
Admit that Lumicore, through its General Counsel Raymond Bautista, received a letter from FairPoint Licensing Group, LLC, dated January 15, 2023, which letter identified U.S. Patent Nos. 10,234,847; 10,891,193; and 9,678,562, and which alleged that certain of Lumicore's products, including the LumiLink 400G-ZR+, infringe one or more claims of the identified patents.
Request for Admission No. 18:
Admit that Lumicore, through outside counsel Hawthorne Vega & Cruz LLP, responded to the January 15, 2023 FairPoint letter by letter dated February 28, 2023, which response disputed the allegations of infringement and raised questions concerning the validity and enforceability of the patents identified in the FairPoint letter.
Request for Admission No. 19:
Admit that on April 20, 2023, representatives of Lumicore, including Raymond Bautista (General Counsel of Lumicore) and Catherine "Kate" Rourke of Hawthorne Vega & Cruz LLP, attended an in-person licensing meeting in Austin, Texas, with Angela Reeves of FairPoint Licensing Group, LLC, and Rebecca Tanaka, General Counsel of OWS, at which the parties discussed the Asserted Patents, the Accused Products, and the possibility of a license.
Request for Admission No. 20:
Admit that the April 20, 2023 in-person licensing meeting referenced in Request for Admission No. 19 concluded without Lumicore agreeing to take a license under any of the Asserted Patents, and without the parties reaching any agreement in principle with respect to licensing terms.
Request for Admission No. 21:
Admit that Lumicore, through its General Counsel Raymond Bautista, received a supplemental letter from FairPoint Licensing Group, LLC, dated May 15, 2023, which supplemental letter additionally identified U.S. Patent No. 11,402,015 (the '015 Patent) among the Asserted Patents and expanded the universe of accused products to include the LumiLink 800G-DR8 transceiver module.
Request for Admission No. 22:
Admit that by letter dated July 10, 2023, Lumicore, through its General Counsel Raymond Bautista, declined to take a license under any of the Asserted Patents and stated in that letter that Lumicore had obtained "competent legal opinions" concluding that its products do not infringe any valid and enforceable claim of the Asserted Patents.
Request for Admission No. 23:
Admit that as of the date of Lumicore's July 10, 2023 declination letter, Lumicore had not ceased, modified, redesigned, or otherwise altered the manufacture, use, sale, offer for sale, or importation into the United States of any of the Accused Products in response to OWS's licensing overtures, infringement allegations, or the pre-suit communications described in Request for Admission Nos. 17 through 22.
E. Accused Product Identification and Commercial Activity
Request for Admission No. 24:
Admit that Lumicore commercially launched the LumiLink 400G-ZR+ transceiver module in the third quarter of 2022 (Q3 2022), and that such product has been available for purchase and delivery to customers in the United States since that time.
Request for Admission No. 25:
Admit that Lumicore commercially launched the LumiLink 800G-DR8 transceiver module in the first quarter of 2023 (Q1 2023), and that such product has been available for purchase and delivery to customers in the United States since that time.
Request for Admission No. 26:
Admit that Lumicore commercially launched the LumiEdge 1600G-LR transceiver module in the fourth quarter of 2023 (Q4 2023), and that such commercial launch occurred after Lumicore had received both the January 15, 2023 and May 15, 2023 FairPoint licensing letters identifying the Asserted Patents and alleging infringement.
Request for Admission No. 27:
Admit that Lumicore has made, used, sold, offered for sale, or imported in or into the United States the LumiLink 400G-ZR+ transceiver module during the period from the third quarter of 2022 (Q3 2022) through and including the date of service of this Request.
Request for Admission No. 28:
Admit that Lumicore has made, used, sold, offered for sale, or imported in or into the United States the LumiLink 800G-DR8 transceiver module during the period from the first quarter of 2023 (Q1 2023) through and including the date of service of this Request.
Request for Admission No. 29:
Admit that Lumicore has made, used, sold, offered for sale, or imported in or into the United States the LumiEdge 1600G-LR transceiver module during the period from the fourth quarter of 2023 (Q4 2023) through and including the date of service of this Request.
Request for Admission No. 30:
Admit that Lumicore generated revenue from the sale of the Accused Products in fiscal year 2023 of at least $264.9 million, consisting of approximately $94.8 million attributable to the LumiLink 400G-ZR+ transceiver module, approximately $128.4 million attributable to the LumiLink 800G-DR8 transceiver module, and approximately $41.7 million attributable to the LumiEdge 1600G-LR transceiver module.
F. Technical Facts About Accused Product Architecture
Request for Admission No. 31:
Admit that the LumiLink 400G-ZR+ transceiver module contains a silicon photonic waveguide multiplexer that combines multiple optical signals of different wavelengths onto a single waveguide for transmission along a common optical path.
Request for Admission No. 32:
Admit that the LumiLink 400G-ZR+ transceiver module contains embedded micro-channel structures that are used for the thermal management of its photonic integrated circuit, including the removal of heat generated during normal operation of the photonic integrated circuit components.
Request for Admission No. 33:
Admit that the LumiLink 800G-DR8 transceiver module contains a silicon photonic waveguide multiplexer that combines multiple optical signals of different wavelengths onto a single waveguide for transmission along a common optical path.
Request for Admission No. 34:
Admit that the LumiLink 800G-DR8 transceiver module contains embedded micro-channel structures that are used for the thermal management of its photonic integrated circuit, including the removal of heat generated during normal operation of the photonic integrated circuit components.
Request for Admission No. 35:
Admit that the LumiLink 800G-DR8 transceiver module contains a grating coupler that is capable of coupling light of two orthogonal polarization states into and out of a silicon photonic waveguide.
Request for Admission No. 36:
Admit that the LumiEdge 1600G-LR transceiver module contains a coherent optical transceiver integrated on a silicon substrate, wherein the silicon substrate supports both the optical and electronic components necessary for coherent optical communication.
Request for Admission No. 37:
Admit that the LumiEdge 1600G-LR transceiver module contains a grating coupler that is capable of coupling light of two orthogonal polarization states into and out of a silicon photonic waveguide.
G. Venue and Presence in the Eastern District of Texas
Request for Admission No. 38:
Admit that Lumicore Technologies, Inc. maintains a sales office and technical support center located at 2700 Earl Campbell Parkway, Suite 150, Tyler, TX 75701, which is within the Eastern District of Texas, marshall Division, and that said office has been operational since at least January 2022.
Request for Admission No. 39:
Admit that Lumicore has sold one or more units of the Accused Products to customers with facilities located within the Eastern District of Texas, including but not limited to Pinnacle Data Systems, LLC (Longview, TX), Frontier Cloud Services, Inc. (Marshall, TX), and CrossPoint Networking Corp. (Plano, TX).
Request for Admission No. 40:
Admit that Lumicore has committed acts of alleged infringement within the Eastern District of Texas, including the sale and offer for sale of one or more of the Accused Products to customers located within this judicial district, and has directed commercial activities related to the Accused Products toward customers and end-users located within the Eastern District of Texas.
Respectfully submitted,
CALDERWOOD & HARKNESS LLP
By: ________
Alan Ngo Partner Texas State Bar No. 24098751 (Admitted pro hac vice, E.D. Tex.) 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 Telephone: (213) 486-7200 Facsimile: (213) 486-7201
Email: ango@calderwoodharkness.com
Marcus Delgado Partner Texas State Bar No. 24067433 California State Bar No. 287114 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 Telephone: (213) 486-7200 Facsimile: (213) 486-7201
Email: mdelgado@calderwoodharkness.com
Wendy Schultz Associate California State Bar No. 319847 (Admitted pro hac vice, E.D. Tex.) 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 Telephone: (213) 486-7200 Facsimile: (213) 486-7201
Email: wschultz@calderwoodharkness.com
Omar Siddiqui Associate California State Bar No. 325091 (Admitted pro hac vice, E.D. Tex.) 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 Telephone: (213) 486-7200 Facsimile: (213) 486-7201
Email: osiddiqui@calderwoodharkness.com
WHITMORE & CALLAHAN LLP
James "Jim" Callahan Partner Texas State Bar No. 03784215 110 North College Avenue, Suite 800 Tyler, TX 75702 Telephone: (903) 597-6100 Facsimile: (903) 597-6101
Email: jcallahan@whitmorecallahan.com
Attorneys for Plaintiff Optiwave Semiconductor Corp.
CERTIFICATE OF SERVICE
I hereby certify that on September 23, 2024, a true and correct copy of the foregoing Plaintiff Optiwave Semiconductor Corp.'s First Set of Requests for Admission to Defendant Lumicore Technologies, Inc. (Nos. 1–40) was served on all counsel of record for Defendant Lumicore Technologies, Inc. via the Court's CM/ECF electronic filing system, which will send notification of such filing to all counsel who have registered to receive electronic notifications in this case, and additionally by email to the following:
Catherine "Kate" Rourke Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, TX 78701
Email: krourke@hvclaw.com
Darren Cho Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, TX 78701
Email: dcho@hvclaw.com
Samantha Briggs Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, TX 78701
Email: sbriggs@hvclaw.com
Rohan Iyer Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, TX 78701
Email: riyer@hvclaw.com
Maria Garza Trask Eddington LLP 425 East Front Street, Suite 300 Tyler, TX 75701
Email: mgarza@traskeddington.com
By: ________
Wendy Schultz Associate CALDERWOOD & HARKNESS LLP 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 Telephone: (213) 486-7200
Email: wschultz@calderwoodharkness.com
OPTIWAVE SEMICONDUCTOR CORP.,
| <!-- indent:2 -->Plaintiff,<!-- /indent --> | Civil Action No. 2:24-cv-00319-JRG |
| v. | Judge James R. Gilstrap |
| LUMICORE TECHNOLOGIES, INC., | JURY TRIAL DEMANDED |
<!-- indent:2 -->Defendant.<!-- /indent -->