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UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

OPTIWAVE SEMICONDUCTOR CORP.,

Plaintiff and Counterclaim Defendant,

LUMICORE TECHNOLOGIES, INC.,

Defendant and Counterclaim Plaintiff.

Civil Action No. 2:24-cv-00319-JRG

JURY TRIAL DEMANDED

PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S ANSWERS AND OBJECTIONS TO DEFENDANT LUMICORE TECHNOLOGIES, INC.'S FIRST SET OF INTERROGATORIES (Nos. 1–25)

Plaintiff and Counterclaim Defendant Optiwave Semiconductor Corp. ("OWS" or "Plaintiff"), by and through its undersigned counsel, hereby submits its Answers and Objections to Defendant and Counterclaim Plaintiff Lumicore Technologies, Inc.'s ("Lumicore" or "Defendant") First Set of Interrogatories (Nos. 1–25), served on August 30, 2024, pursuant to Federal Rules of Civil Procedure 26 and 33. OWS responds as follows:

I. PRELIMINARY STATEMENT

OWS objects to Lumicore's interrogatories to the extent they seek information protected by the attorney-client privilege, the work-product doctrine, or the joint-defense/common-interest privilege. Nothing in these responses is intended to, nor shall it be construed to, waive any such privilege or protection. By providing these responses, OWS does not waive any privilege or protection with respect to any information, document, or communication, whether or not specifically identified herein.

OWS reserves the right to supplement or amend these responses in accordance with Federal Rule of Civil Procedure 26(e) and the Court's Scheduling Order (D.E. 27, entered August 12, 2024). OWS's obligation to supplement these responses is continuing, and OWS will provide supplemental responses as additional information becomes available through the ongoing discovery process.

Discovery in this action is ongoing. OWS's responses are based on information reasonably available to OWS as of the date of service of these responses. OWS has produced approximately 182,000 documents comprising approximately 1.4 million pages to date in its document productions to Lumicore and continues to collect, review, and produce potentially responsive materials on a rolling basis. OWS's investigation into the facts and circumstances underlying this action is likewise continuing, and OWS's responses should not be understood as a complete recitation of all facts, circumstances, evidence, or contentions that may be relevant to this action.

OWS's responses are made without waiver of, and subject to, any and all objections to the competency, relevance, materiality, authenticity, or admissibility of any information or document referenced herein, all of which objections are expressly reserved and may be asserted at any time, including at trial.

As used in these responses, "OWS" refers to Optiwave Semiconductor Corp. "Lumicore" refers to Lumicore Technologies, Inc. All other capitalized terms not defined herein shall have the meaning ascribed to them in Lumicore's interrogatories or in the pleadings filed in this action, unless otherwise indicated.

II. GENERAL OBJECTIONS

OWS makes the following General Objections, each of which is incorporated by reference into each of OWS's specific responses set forth below as if fully restated therein:

1. OWS objects to the definitions and instructions set forth in Lumicore's First Set of Interrogatories to the extent they seek to impose obligations on OWS beyond those required by the Federal Rules of Civil Procedure, the Local Rules of the United States District Court for the Eastern District of Texas, and the Court's Scheduling Order (D.E. 27, entered August 12, 2024). OWS will respond to each interrogatory in accordance with its obligations under those rules and orders, and not in accordance with any additional or different obligations that Lumicore's instructions may purport to impose.

2. OWS objects to any interrogatory that is overly broad, unduly burdensome, or disproportionate to the needs of the case under Federal Rule of Civil Procedure 26(b)(1), considering the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit.

3. OWS objects to any interrogatory to the extent it calls for the production of documents rather than narrative answers. Where appropriate, OWS will produce responsive documents in accordance with its document production obligations and refers Lumicore to those productions pursuant to Federal Rule of Civil Procedure 33(d), which permits a responding party to specify records from which the answer may be derived or ascertained. OWS's election to exercise its rights under Rule 33(d) shall not be construed as an agreement that any particular interrogatory is proper or that OWS is obligated to provide a more detailed narrative response.

4. OWS objects to any interrogatory to the extent it seeks information already in Lumicore's possession, custody, or control, or that is equally available to Lumicore from public sources, including but not limited to publicly available patent files, SEC filings, published patent applications, and records maintained by the United States Patent and Trademark Office.

5. OWS objects to any interrogatory that contains compound, conjunctive, or disjunctive sub-parts to the extent such sub-parts cause the interrogatory to exceed the twenty-five (25) interrogatory limit established by Federal Rule of Civil Procedure 33(a)(1). OWS reserves the right to treat discrete sub-parts of any interrogatory as separate interrogatories for purposes of the numerical limitation.

6. OWS objects to any interrogatory seeking information that is subject to the Stipulated Protective Order entered by the Court (D.E. 30, entered August 19, 2024), which establishes three tiers of confidentiality designations: "Confidential," "Highly Confidential — Attorneys' Eyes Only," and "Highly Confidential — Source Code." OWS will designate information responsive to Lumicore's interrogatories in accordance with the terms of the Stipulated Protective Order, and any such designations are without prejudice to OWS's right to challenge or modify such designations in the future.

7. These General Objections are incorporated by reference into each specific response set forth below, as if fully restated in each such response. The assertion of specific objections in connection with any particular interrogatory shall not be construed as a waiver of these General Objections or of any other objection available to OWS, whether or not expressly stated.

III. INTERROGATORY RESPONSES

INTERROGATORY NO. 1

Interrogatory: Identify each person involved in the conception and/or development of the inventions claimed in each of the Asserted Patents, and for each such person, state the nature and extent of his or her involvement.

Objections: OWS objects to this interrogatory to the extent it is overbroad, as the phrase "involved in the conception and/or development" could be construed to encompass every person who had any tangential involvement in the research, development, testing, or commercialization of the underlying technology. OWS further objects to the extent this interrogatory seeks information protected by the attorney-client privilege or work-product doctrine relating to patent prosecution strategy, the selection of named inventors, or legal advice rendered in connection with the drafting and filing of patent applications. OWS will respond by identifying the named inventors and key contributors to the conception and development of the inventions claimed in the asserted patents, to the extent such information is not privileged.

Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS identifies the following persons who were involved in the conception and/or development of the inventions claimed in the asserted patents:

U.S. Patent No. 10,234,847 ("the '847 Patent"): The named inventors of the '847 Patent are Dr. Jian-Wei Huang, Chief Technology Officer of Optiwave Semiconductor Corp., and Dr. Nikolai Petrov, Vice President of Engineering, Photonics Division, of Optiwave Semiconductor Corp. Dr. Huang and Dr. Petrov conceived the inventions claimed in the '847 Patent in connection with their work at OWS's Photonics Division design team, located at OWS's Santa Clara headquarters at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054. Key contributors to the conception and development of the inventions claimed in the '847 Patent include additional members of OWS's Photonics Division design team at the Santa Clara headquarters, whose identities will be supplemented as OWS's investigation continues.

U.S. Patent No. 10,891,193 ("the '193 Patent"): The named inventors of the '193 Patent are Dr. Jian-Wei Huang and Dr. Nikolai Petrov. The '193 Patent claims priority to Provisional Application No. 62/499,117, filed April 7, 2017. The inventions claimed in the '193 Patent were conceived and developed in the course of OWS's ongoing silicon-photonics research program at the Santa Clara headquarters. The conception of the inventions occurred in or about late 2016 through early 2017, culminating in the filing of the provisional application.

U.S. Patent No. 9,678,562 ("the '562 Patent"): The '562 Patent was originally assigned to Solara Optics, Inc., a California corporation. The named inventors of the '562 Patent include personnel of Solara Optics, Inc. OWS refers Lumicore to the face of the '562 Patent and its prosecution history for the complete listing of named inventors. Gregory Falk, the former Vice President of Engineering at Solara Optics, Inc., was involved in overseeing and directing the development of the inventions claimed in the '562 Patent. Mr. Falk is currently an independent consultant and has been retained by OWS as an industry expert in this action. OWS acquired the '562 Patent from Solara Optics, Inc. pursuant to an Asset Purchase Agreement dated June 15, 2018, as described more fully in response to Interrogatory No. 2 below.

U.S. Patent No. 11,402,015 ("the '015 Patent"): The named inventors of the '015 Patent are Dr. Jian-Wei Huang and Dr. Nikolai Petrov. The '015 Patent shares Provisional Application No. 62/499,117 (filed April 7, 2017) with the '193 Patent and was developed as part of the same research program at OWS's Photonics Division in Santa Clara, California.

OWS further identifies Dr. Martin Chu of Cascade IP Advisors, LLC, located at 1550 Crystal Drive, Suite 600, Arlington, Virginia 22202, as the lead patent prosecution attorney who prosecuted all four asserted patents before the United States Patent and Trademark Office. Dr. Chu's involvement pertained to the preparation, filing, and prosecution of the patent applications, and OWS objects to providing further details regarding Dr. Chu's involvement to the extent such information is protected by the attorney-client privilege.

OWS reserves the right to supplement this response as its investigation continues and as additional information becomes available.

INTERROGATORY NO. 2

Interrogatory: Identify the complete chain of title for each Asserted Patent from the date of filing through the present, including all assignments, transfers, licenses, encumbrances, or other changes in ownership.

Objections: OWS incorporates its General Objections. OWS has no additional objections specific to this interrogatory.

Answer: Subject to and without waiving the General Objections incorporated herein, OWS identifies the following chain of title for each asserted patent:

'847 Patent (U.S. Patent No. 10,234,847): The application that resulted in the '847 Patent was filed on September 14, 2016. The original assignee was Optiwave Semiconductor Corp. The '847 Patent issued on March 19, 2019, to Optiwave Semiconductor Corp. The '847 Patent has remained assigned to OWS continuously since its filing date, and no assignments, transfers, encumbrances, or other changes in ownership have occurred. All maintenance fees due on the '847 Patent are current. The '847 Patent and the '562 Patent are in the same patent family and share a continuation relationship.

'193 Patent (U.S. Patent No. 10,891,193): The application that resulted in the '193 Patent was filed on April 7, 2017, claiming priority to Provisional Application No. 62/499,117, filed April 7, 2017. The original assignee was Optiwave Semiconductor Corp. The '193 Patent issued on January 12, 2021, to Optiwave Semiconductor Corp. The '193 Patent has remained assigned to OWS continuously since its filing date, and no assignments, transfers, encumbrances, or other changes in ownership have occurred. All maintenance fees due on the '193 Patent are current. The '193 Patent and the '015 Patent share a common provisional application, Provisional Application No. 62/499,117.

'562 Patent (U.S. Patent No. 9,678,562): The application that resulted in the '562 Patent was filed on November 22, 2014. The original assignee was Solara Optics, Inc. The '562 Patent issued on June 13, 2017, to Solara Optics, Inc. On June 15, 2018, Solara Optics, Inc. assigned the '562 Patent to Optiwave Semiconductor Corp. pursuant to an Asset Purchase Agreement ("APA") dated June 15, 2018, for a total purchase price of $34.5 million. The APA transferred the '562 Patent and eleven (11) other United States patents (twelve patents total) from Solara Optics, Inc. to OWS, along with related patent applications, technical documentation, and associated know-how. The assignment of the '562 Patent from Solara Optics, Inc. to OWS was duly recorded with the United States Patent and Trademark Office. Solara Optics, Inc. was subsequently dissolved in 2020. Since the June 15, 2018 assignment, the '562 Patent has remained assigned to OWS, and no further assignments, transfers, encumbrances, or other changes in ownership have occurred. All maintenance fees due on the '562 Patent are current.

'015 Patent (U.S. Patent No. 11,402,015): The application that resulted in the '015 Patent was filed on August 30, 2019, claiming priority to Provisional Application No. 62/499,117, filed April 7, 2017. The original assignee was Optiwave Semiconductor Corp. The '015 Patent issued on August 2, 2022, to Optiwave Semiconductor Corp. The '015 Patent has remained assigned to OWS continuously since its filing date, and no assignments, transfers, encumbrances, or other changes in ownership have occurred. All maintenance fees due on the '015 Patent are current.

OWS refers Lumicore to the recorded assignment documents at the United States Patent and Trademark Office, copies of which have been produced in OWS's document productions (Bates Nos. OWS-000001 through OWS-000048), and to the Solara Optics Asset Purchase Agreement, which has been produced at Bates Nos. OWS-004500 through OWS-004612, designated as Highly Confidential — Attorneys' Eyes Only under the Stipulated Protective Order.

INTERROGATORY NO. 3

Interrogatory: Identify all products manufactured, sold, offered for sale, imported, or used by OWS that allegedly practice or embody one or more claims of the Asserted Patents.

Objections: OWS objects to this interrogatory to the extent it seeks to impose on OWS any obligation to prove that its own products practice the asserted patents as a precondition to enforcing those patents against Lumicore. Whether or not OWS's own products practice the asserted patents is not a prerequisite to OWS's right to enforce its patents and has no bearing on Lumicore's infringement. OWS further objects to the extent this interrogatory is premature insofar as it relates to issues of marking and constructive notice under 35 U.S.C. § 287, which are subject to ongoing factual development.

Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS identifies the following product families as embodying or practicing one or more claims of the asserted patents:

• OWS-400ZR transceiver module family — OWS contends that products in this family practice one or more claims of the '847 Patent, the '193 Patent, and the '562 Patent.

• OWS-800XR transceiver module family — OWS contends that products in this family practice one or more claims of the '847 Patent, the '193 Patent, the '562 Patent, and the '015 Patent.

• OWS-1600DR transceiver module family — OWS contends that products in this family practice one or more claims of the '193 Patent and the '015 Patent.

These products are manufactured by OWS through its contract foundry partners and are sold to hyperscale data-center operators and telecommunications companies in the United States and internationally. OWS's fiscal year 2023 revenue was $487.3 million, as reflected in OWS's audited financial statements prepared by Gresham & Whitfield LLP (San Jose, California office). Of that total, approximately $310 million is attributable to products that practice one or more claims of the asserted patents. OWS has approximately 1,250 employees and is headquartered in Santa Clara, California.

OWS reserves the right to supplement this response as additional product information becomes available and as its investigation continues.

INTERROGATORY NO. 4

Interrogatory: Identify all license agreements, settlement agreements, or other agreements involving one or more of the Asserted Patents, including the identity of the licensee, the date of the agreement, the financial terms, and the patents covered.

Objections: OWS objects to this interrogatory to the extent it seeks confidential and commercially sensitive business information that is subject to the protections of the Stipulated Protective Order (D.E. 30, entered August 19, 2024). OWS will designate responsive information as "Highly Confidential — Attorneys' Eyes Only" as appropriate under the terms of the Protective Order. OWS further objects to the extent this interrogatory seeks information regarding agreements that may not be comparable to the hypothetical license at issue in this case and therefore may be of limited relevance.

Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS identifies the following license agreements involving one or more of the asserted patents:

1. OWS – Terralink Semiconductor License Agreement (2020): In 2020, OWS entered into a license agreement with Terralink Semiconductor, Inc. The agreement provides for a running royalty of 6.5% on licensed product revenue. Terralink's licensed revenue under this agreement has been approximately $45 million to date. The license covers the '847 Patent and the '562 Patent.

2. OWS – NovaWave Corp. License Agreement (2021): In 2021, OWS entered into a license agreement with NovaWave Corp. The agreement provides for a running royalty of 9.0% on licensed product revenue. NovaWave's licensed revenue under this agreement has been approximately $22 million to date. The license covers the '847 Patent, the '193 Patent, and the '562 Patent.

3. OWS – Helix Integrated Photonics License Agreement (2022): In 2022, OWS entered into a license agreement with Helix Integrated Photonics, Inc. The agreement provides for a running royalty of 7.75% on licensed product revenue, plus an upfront lump-sum payment of $2.5 million. Helix's licensed revenue under this agreement has been approximately $68 million to date. The license covers all four asserted patents — the '847 Patent, the '193 Patent, the '562 Patent, and the '015 Patent.

Copies of each of these license agreements have been produced in OWS's document productions and have been designated as Highly Confidential — Attorneys' Eyes Only under the Stipulated Protective Order.

OWS further identifies that FairPoint Licensing Group, LLC, located at 500 Sansome Street, Suite 1400, San Francisco, California 94111 (Managing Director: Angela Reeves), served as OWS's licensing agent and conducted pre-suit licensing outreach to Lumicore on OWS's behalf. FairPoint's outreach to Lumicore included two licensing and notice letters (dated January 15, 2023, and May 15, 2023, respectively) and one in-person licensing meeting (held on April 20, 2023, in Austin, Texas). Despite this outreach, no license was executed with Lumicore, and Lumicore declined to take a license on July 10, 2023.

INTERROGATORY NO. 5

Interrogatory: Identify and describe each damages theory and basis for all damages sought by OWS in this action, including the methodology, data sources, assumptions, and calculations underlying each theory.

Objections: OWS objects to this interrogatory to the extent it is premature given that expert reports on damages are not due until June 15, 2025, pursuant to the Court's Scheduling Order (D.E. 27, entered August 12, 2024). OWS further objects to the extent this interrogatory seeks detailed financial modeling, expert analysis, assumptions, or calculations that are properly the subject of expert reports to be served pursuant to Federal Rule of Civil Procedure 26(a)(2), and that OWS's damages expert, Dr. Lawrence Keating of Meridian Economic Consulting Group, LLC, has not yet completed his analysis. OWS will supplement this response following the service of its expert reports. OWS further objects to the extent this interrogatory calls for premature disclosure of work product or attorney mental impressions regarding litigation strategy.

Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS identifies the following damages theories:

Theory 1 — Lost Profits (Panduit Analysis):

OWS contends that it is entitled to lost-profit damages arising from sales it lost directly to Lumicore's accused products. OWS's lost-profits theory is based on the four-factor test articulated in Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152 (6th Cir. 1978), and its progeny. OWS contends that all four Panduit factors are satisfied:

(1) Demand for the patented product: OWS's fiscal year 2023 revenue of $487.3 million, of which approximately $310 million is attributable to products practicing the asserted patents, demonstrates robust and sustained market demand for the patented technology.

(2) Absence of acceptable non-infringing substitutes: OWS has analyzed four potential alternative technologies that might serve as substitutes for the accused products and has concluded that each alternative lacks one or more key patented features claimed in the asserted patents, rendering none an acceptable non-infringing substitute. The specific alternatives and the deficiencies of each will be detailed in the expert reports of Dr. Caroline Ashford and Dr. Lawrence Keating.

(3) Manufacturing and marketing capability: OWS had and has the manufacturing capacity — through its established foundry partners — and the marketing and sales infrastructure to serve the demand that was diverted to Lumicore's accused products.

(4) Amount of profit OWS would have made: OWS's gross margin on the competing products (OWS-400ZR and OWS-800XR transceiver module families) is 47.3%, as reflected in OWS's internal financial records produced in discovery.

OWS estimates that Lumicore's projected accused-product revenue for the period from the third quarter of 2022 through the fourth quarter of 2025 (the projected trial date) is approximately $714.6 million. OWS contends that market-share displacement attributable to Lumicore's infringement is approximately 38.2%. Based on these figures, OWS's preliminary lost-profit damages estimate is approximately $128.9 million (calculated as $714.6 million × 38.2% × 47.3%).

Theory 2 — Reasonable Royalty (Georgia-Pacific Analysis):

For sales where lost profits cannot be demonstrated — specifically, sales to customers that OWS could not have served or where the causal nexus between infringement and lost sales cannot be established — OWS asserts a reasonable royalty of 8.5% of accused-product net sales. The hypothetical negotiation date is the second quarter of 2022, which is the period immediately preceding Lumicore's commercial launch of the first accused product, the LumiLink 400G-ZR+. The proposed 8.5% royalty rate is supported by the comparable license agreements identified in response to Interrogatory No. 4 above (with rates ranging from 6.5% to 9.0%) and by an analysis of all fifteen factors set forth in Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970). OWS's preliminary reasonable-royalty damages estimate is approximately $37.5 million, calculated as the portion of Lumicore's accused-product revenue not captured by the lost-profits analysis ($714.6 million − ($714.6 million × 38.2%) = approximately $441.6 million), multiplied by the 8.5% royalty rate ($441.6 million × 8.5% ≈ $37.5 million).

Theory 3 — Enhanced Damages for Willful Infringement:

OWS seeks enhanced damages pursuant to 35 U.S.C. § 284 and in accordance with the Supreme Court's decision in Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), for the period following Lumicore's receipt of actual notice of the asserted patents. Actual notice was provided via FairPoint Licensing Group's January 15, 2023 licensing letter, which identified the '847, '193, and '562 Patents and described Lumicore's potential infringement. OWS's post-notice lost-profit damages are approximately $109.2 million, reflecting the portion of lost profits attributable to the period after January 15, 2023. OWS seeks a multiplier of up to two times (2×) on the post-notice lost-profits component, based on the egregiousness of Lumicore's conduct, including its continued and expanded infringement after notice and its refusal to engage in good-faith licensing negotiations.

Aggregate Damages Demand:

OWS's aggregate damages demand is approximately $210.0 million, which is a blended and rounded figure incorporating the three theories described above, as pled in the Complaint (D.E. 1, filed April 22, 2024). This figure is preliminary and subject to refinement based on ongoing discovery, updated financial data, and the expert analysis of Dr. Lawrence Keating of Meridian Economic Consulting Group, LLC (233 South Wacker Drive, Suite 4400, Chicago, Illinois 60606), who will present the full damages analysis, including multiple recovery scenarios and sensitivity analyses, in his expert report due June 15, 2025.

In addition to monetary damages, OWS seeks a permanent injunction barring Lumicore from making, using, selling, offering to sell, or importing into the United States the accused products or any colorable imitations thereof, as well as pre-judgment and post-judgment interest, costs, and attorneys' fees to the extent warranted under 35 U.S.C. § 285.

INTERROGATORY NO. 6

Interrogatory: Identify all prior art known to OWS relating to the Asserted Patents, including the date on which OWS first became aware of each item of prior art.

Objections: OWS objects to this interrogatory as overly broad and unduly burdensome, as the phrase "relating to the Asserted Patents" is vague, ambiguous, and could encompass an unlimited range of prior art across the entire field of silicon photonics and optical communications. OWS further objects to the extent this interrogatory improperly seeks to shift to OWS the burden of proving invalidity, which is properly Lumicore's burden under 35 U.S.C. § 282. OWS additionally objects to the extent the interrogatory seeks information that is contained in the prosecution histories of the asserted patents, which are publicly available through the United States Patent and Trademark Office's Patent Application Information Retrieval ("PAIR") system and have been produced in OWS's document productions.

Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS refers Lumicore to the prosecution histories of each of the four asserted patents, which identify all prior art references that were considered by the USPTO examiners during the prosecution of the respective patent applications. These prosecution histories have been produced in OWS's document productions and are also publicly available through the USPTO's PAIR system. OWS's patent prosecution counsel, Dr. Martin Chu of Cascade IP Advisors, LLC, fulfilled all disclosure obligations imposed by 37 C.F.R. § 1.56 (the duty of candor) during the prosecution of each of the asserted patents.

OWS is aware that Lumicore served its invalidity contentions on October 14, 2024 (D.E. 36), in which Lumicore identified twenty-three (23) prior-art references that Lumicore contends render the asserted claims invalid. OWS's technical expert, Dr. Caroline Ashford, is analyzing those references as part of her invalidity rebuttal analysis, and OWS reserves the right to supplement this response following the completion of Dr. Ashford's analysis and the preparation of her expert report, due June 15, 2025.

INTERROGATORY NO. 7

Interrogatory: Describe the prosecution history of each Asserted Patent, including all rejections, amendments, and arguments made to the USPTO during prosecution.

Objections: OWS objects to this interrogatory to the extent it seeks a narrative recitation of prosecution histories that are publicly available, voluminous, and equally accessible to Lumicore through the USPTO's PAIR system. OWS further objects on the ground that a narrative summary of prosecution history is burdensome and disproportionate to the needs of the case given the public availability of the underlying records. OWS invokes Federal Rule of Civil Procedure 33(d) and directs Lumicore to the prosecution history files produced in OWS's document productions and publicly available through the USPTO PAIR system, from which the answer to this interrogatory may be derived or ascertained.

Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS provides the following summary of the prosecution history for each asserted patent:

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

The application that resulted in the '847 Patent was filed on September 14, 2016, with Optiwave Semiconductor Corp. as the original assignee. Prosecution was conducted by Dr. Martin Chu of Cascade IP Advisors, LLC. The '847 Patent is in the same patent family as the '562 Patent and shares a continuation relationship with the '562 Patent. During prosecution, OWS received at least one Office Action from the USPTO examiner. In response, the applicant made arguments distinguishing the cited prior art and, where appropriate, narrowed certain claim language to overcome the examiner's rejections. The '847 Patent issued on March 19, 2019, with all claims allowed by the examiner. OWS refers Lumicore to the complete prosecution history file for the '847 Patent, which has been produced in OWS's document productions at Bates Nos. OWS-001001 through OWS-001342.

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

The application that resulted in the '193 Patent was filed on April 7, 2017, claiming priority to Provisional Application No. 62/499,117, filed April 7, 2017. Prosecution was conducted by Dr. Martin Chu of Cascade IP Advisors, LLC. During prosecution, the USPTO examiner issued a rejection under 35 U.S.C. § 102, citing Takahashi et al., "Dense WDM Silicon Photonic MUX," published in IEEE Photonics Technology Letters in March 2014. In response to the examiner's rejection, the applicant narrowed the "coherent detection module" limitation in the claims and provided arguments distinguishing the Takahashi reference. The examiner was persuaded, and the '193 Patent issued on January 12, 2021, with all claims allowed. OWS refers Lumicore to the complete prosecution history file for the '193 Patent, which has been produced in OWS's document productions at Bates Nos. OWS-001343 through OWS-001798.

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

The application that resulted in the '562 Patent was filed on November 22, 2014, with Solara Optics, Inc. as the original assignee. Prosecution was conducted by Dr. Martin Chu of Cascade IP Advisors, LLC. During prosecution, the USPTO examiner considered prior art relating to thermal management in photonic integrated circuits. The applicant made arguments distinguishing the cited prior art and demonstrating the novelty and non-obviousness of the claimed inventions. The '562 Patent issued on June 13, 2017, with all claims allowed. As described in response to Interrogatory No. 2 above, OWS acquired the '562 Patent from Solara Optics, Inc. pursuant to an Asset Purchase Agreement dated June 15, 2018, which transferred the '562 Patent and eleven other patents for a total purchase price of $34.5 million. OWS refers Lumicore to the complete prosecution history file for the '562 Patent, which has been produced in OWS's document productions at Bates Nos. OWS-001799 through OWS-002145.

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

The application that resulted in the '015 Patent was filed on August 30, 2019, claiming priority to Provisional Application No. 62/499,117, filed April 7, 2017, which is the same provisional application shared with the '193 Patent. Prosecution was conducted by Dr. Martin Chu of Cascade IP Advisors, LLC. During prosecution, the USPTO examiner issued a rejection under 35 U.S.C. § 103, combining U.S. Patent No. 8,412,007 (Bergmann) with PCT Publication No. PCT/EP2015/071234 (Simonsen). In response, the applicant made a narrowing amendment to the "two-dimensional sub-wavelength grating" limitation in the claims and argued non-obviousness over the combination of references. The examiner was persuaded, and the '015 Patent issued on August 2, 2022, with all claims allowed. OWS refers Lumicore to the complete prosecution history file for the '015 Patent, which has been produced in OWS's document productions at Bates Nos. OWS-002146 through OWS-002489.

INTERROGATORY NO. 8

Interrogatory: Identify all persons with knowledge of the alleged infringement by Lumicore, including the subject matter of each person's knowledge.

Objections: OWS objects to this interrogatory to the extent it is overly broad and duplicative of OWS's Initial Disclosures under Federal Rule of Civil Procedure 26(a)(1), which were served on August 19, 2024 (D.E. 32), and which identified individuals likely to have discoverable information relevant to OWS's claims. OWS incorporates its Initial Disclosures by reference and identifies additional individuals below.

Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS identifies the following persons with knowledge of the alleged infringement by Lumicore:

1. Dr. Jian-Wei Huang — Chief Technology Officer, Optiwave Semiconductor Corp., 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054. Dr. Huang has knowledge of the patented technology underlying each of the four asserted patents, OWS's product design and development process, and technical comparisons between OWS's products and Lumicore's accused products. Dr. Huang was deposed on November 5, 2024.

2. Dr. Nikolai Petrov — Vice President of Engineering, Photonics Division, Optiwave Semiconductor Corp., 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054. Dr. Petrov has knowledge of the patented technology, OWS's product development history, the technical operation of the patented inventions, and the technical analysis of Lumicore's accused products.

3. Rebecca Tanaka — General Counsel, Optiwave Semiconductor Corp., 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054. Ms. Tanaka has knowledge of pre-suit investigations of Lumicore's products, OWS's licensing outreach efforts, the engagement of FairPoint Licensing Group as licensing agent, the engagement of litigation counsel, and overall case management and strategy, subject to the attorney-client privilege and work-product doctrine.

4. Kevin Ng — Lead Engineer, Benchmark Semiconductor Analysis, LLC, 2244 Mission College Boulevard, Santa Clara, California 95054. Mr. Ng conducted detailed teardown and reverse-engineering analyses of Lumicore's accused products, including: (a) the LumiLink 400G-ZR+ (teardown report delivered December 12, 2022); (b) the LumiLink 800G-DR8 (teardown report delivered June 2023); and (c) the LumiEdge 1600G-LR (teardown report delivered February 2024). Mr. Ng has knowledge of the internal structures, components, and operation of each accused product. Mr. Ng was deposed on January 7, 2025.

5. Angela Reeves — Managing Director, FairPoint Licensing Group, LLC, 500 Sansome Street, Suite 1400, San Francisco, California 94111. Ms. Reeves has knowledge of OWS's pre-suit licensing outreach to Lumicore, including the content and purpose of the January 15, 2023 and May 15, 2023 licensing letters and the April 20, 2023 in-person licensing meeting held in Austin, Texas. Ms. Reeves was deposed on December 10, 2024.

6. Gregory Falk — Independent consultant; former Vice President of Engineering, Solara Optics, Inc. Mr. Falk has knowledge of the development of the '562 Patent, Solara Optics's silicon-photonics technology, the industry context and competitive landscape for silicon-photonic transceivers, and the commercial significance of the patented innovations.

7. Dr. Caroline Ashford — Professor of Electrical Engineering & Photonics, Northfield Institute of Technology, Evanston, Illinois. Dr. Ashford has been retained as OWS's technical and infringement expert in this action. Dr. Ashford will provide expert opinions on infringement (literal and under the doctrine of equivalents) and validity (rebuttal of Lumicore's invalidity contentions) in her expert reports, which are due June 15, 2025.

8. Dr. Lawrence Keating — Managing Director, Meridian Economic Consulting Group, LLC, 233 South Wacker Drive, Suite 4400, Chicago, Illinois 60606. Dr. Keating has been retained as OWS's damages expert in this action. Dr. Keating will provide expert analysis and testimony on lost profits, reasonable royalty, and enhanced damages in his expert report, which is due June 15, 2025.

9. Melissa Chen — Former engineer at Lumicore Technologies, Inc.; currently employed at Veridian Photonics, Inc. OWS has knowledge and belief that Ms. Chen was a member of Lumicore's LumiLink 400G-ZR+ design team and has knowledge regarding Lumicore's awareness of OWS's published patent applications during the product design phase in 2021–2022. A third-party subpoena has been served on Ms. Chen (January 22, 2025), and OWS anticipates obtaining her testimony in connection with the willful infringement issues in this case.

OWS reserves the right to supplement this list as its investigation continues and as additional fact and expert witnesses are identified.

INTERROGATORY NO. 9

Interrogatory: Identify the factual basis for OWS's allegation that Lumicore's infringement was willful, including all facts, circumstances, and evidence supporting OWS's willfulness claim.

Objections: OWS objects to this interrogatory to the extent it seeks information protected by the attorney-client privilege or the work-product doctrine, including internal legal assessments, litigation strategy, and privileged communications regarding OWS's evaluation of Lumicore's willfulness. OWS further objects to the extent this interrogatory is premature, as willful infringement evidence will be more fully developed through ongoing expert and fact discovery, including the resolution of OWS's pending Motion to Compel Production of Opinion-of-Counsel Letters (D.E. 40, filed October 21, 2024).

Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS identifies the following factual bases for its allegation of willful infringement:

1. Pre-Suit Notice Letters: FairPoint Licensing Group, LLC, acting as OWS's authorized licensing agent, sent a detailed licensing and notice letter to Lumicore's General Counsel, Raymond Bautista, on January 15, 2023. The January 15, 2023 letter identified the '847 Patent, the '193 Patent, and the '562 Patent by number, described the patented technology and its relevance to Lumicore's LumiLink 400G-ZR+ product, and put Lumicore on actual notice of those patents and their potential infringement. A second letter was sent on May 15, 2023, adding the '015 Patent (which had issued on August 2, 2022) and expanding the scope of the accused products to include Lumicore's LumiLink 800G-DR8 module. Both letters offered Lumicore the opportunity to negotiate a license on commercially reasonable terms.

2. In-Person Meeting: On April 20, 2023, Angela Reeves of FairPoint Licensing Group and Rebecca Tanaka of OWS met in person with Raymond Bautista, Lumicore's General Counsel, and Catherine "Kate" Rourke of Hawthorne Vega & Cruz LLP, Lumicore's outside counsel, at a meeting held in Austin, Texas. During this meeting, OWS's representatives presented claim charts mapping the asserted patents to Lumicore's accused products and offered to negotiate a license. According to Ms. Reeves's deposition testimony (December 10, 2024 deposition), Lumicore's representatives acknowledged receipt of the patents and the claim charts but showed "no interest in negotiating" a license.

3. Lumicore's Declination: On July 10, 2023, Lumicore, through its outside counsel at Hawthorne Vega & Cruz LLP, formally declined to take a license, stating that it had obtained "competent legal opinions" concluding that its products do not infringe the asserted patents. Lumicore has refused to produce those opinion-of-counsel letters in this litigation, asserting attorney-client privilege. OWS's Motion to Compel Production of Opinion-of-Counsel Letters (D.E. 40, filed October 21, 2024) remains pending before the Court.

4. Continued and Expanded Infringement: After receiving actual notice of the asserted patents and declining to take a license, Lumicore launched its LumiEdge 1600G-LR transceiver module in the fourth quarter of 2023. OWS alleges that the LumiEdge 1600G-LR infringes the '193 Patent and the '015 Patent. Lumicore's decision to launch a new accused product after receiving notice of the asserted patents and declining to engage in licensing negotiations is evidence of deliberate and willful infringement.

5. Design-Phase Awareness of OWS Patents: OWS has evidence that during the design phase of the LumiLink 400G-ZR+ in 2021–2022, Lumicore's design team accessed and reviewed OWS's published patent applications, including specifically Published Application No. 2018/0123456, which corresponds to the '193 Patent. OWS's information and belief regarding this fact is based in part on knowledge obtained from Melissa Chen, a former Lumicore engineer who was a member of the LumiLink 400G-ZR+ design team and who is now employed at Veridian Photonics, Inc.

6. Deposition Admissions: Dr. Sandra Michaud, Lumicore's Chief Technology Officer, admitted during her deposition on November 19, 2024 that she personally reviewed OWS Published Application No. 2018/0123456 (corresponding to the '193 Patent) during the LumiLink 400G-ZR+ design phase. While Dr. Michaud denied knowledge of the issued patents until she received the FairPoint licensing letter, her admission that she reviewed the published application during the design phase is evidence that Lumicore was aware of OWS's claimed technology before launching its accused products. Additionally, Raymond Bautista, Lumicore's General Counsel, confirmed during his deposition on December 3, 2024 that he received FairPoint's January 15, 2023 notice letter and acknowledged that he forwarded it to outside counsel within three business days of receipt. Mr. Bautista further admitted that no formal design-around analysis was commissioned before the launch of the LumiEdge 1600G-LR product in the fourth quarter of 2023.

INTERROGATORY NO. 10

Interrogatory: Identify the factual basis for OWS's claim of induced infringement, including the identity of the persons or entities alleged to have been induced to infringe, the specific acts of inducement, and the specific claims alleged to have been induced.

Objections: OWS objects to this interrogatory to the extent it seeks legal conclusions rather than factual information. OWS further objects to the extent this interrogatory seeks information protected by the work-product doctrine, including OWS's legal analysis and theories regarding induced infringement.

Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS contends that Lumicore has induced infringement of all four asserted patents — the '847 Patent, the '193 Patent, the '562 Patent, and the '015 Patent — by actively encouraging, instructing, and directing its customers to use, integrate, and deploy the accused products (the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR) in data-center and telecommunications environments in a manner that practices the methods claimed in the asserted patents.

Specifically, Lumicore provides its customers with technical documentation, application guides, integration support materials, installation manuals, and technical training programs that direct and instruct customers in using the accused products in an infringing manner. Lumicore also provides field-application engineering support to assist customers in deploying the accused products in configurations that practice the patented methods. Lumicore undertakes these activities with knowledge of the asserted patents, which was established through FairPoint Licensing Group's licensing and notice letters dated January 15, 2023 and May 15, 2023, and the April 20, 2023 in-person licensing meeting in Austin, Texas.

OWS identifies the following Lumicore customers with facilities in this District as entities that have been induced to infringe by Lumicore's actions:

• Pinnacle Data Systems, LLC, 1800 Judson Road, Longview, Texas 75601

• Frontier Cloud Services, Inc., 400 East Houston Street, marshall, Texas 75670

• CrossPoint Networking Corp., 7500 Dallas Parkway, Suite 200, Plano, Texas 75024

OWS reserves the right to identify additional induced infringers as discovery continues.

INTERROGATORY NO. 11

Interrogatory: Identify the factual basis for OWS's claim of contributory infringement, including the identity of the components or features alleged to constitute a material part of the patented inventions and the basis for OWS's contention that those components have no substantial non-infringing use.

Objections: OWS incorporates its objections stated in response to Interrogatory No. 10. OWS further objects to the extent this interrogatory seeks legal conclusions regarding the application of 35 U.S.C. § 271(c) to the facts of this case, or to the extent it seeks information protected by the work-product doctrine.

Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS contends that specific components of Lumicore's accused products constitute material parts of the patented inventions, are especially adapted for use in an infringing manner, have no substantial non-infringing use, and are not staple articles of commerce suitable for substantial non-infringing use. The specific components at issue include:

• Silicon-photonic waveguide multiplexer modules — These components are integral to the operation of the accused products and directly correspond to limitations of the asserted claims. They are specifically designed and configured to perform the multiplexing functions claimed in the asserted patents and have no substantial non-infringing use apart from integration into infringing transceiver modules.

• Embedded micro-channel heat sinks — These thermal management components are especially adapted for use in the photonic integrated circuits of the accused products and correspond to the thermal management limitations claimed in the '562 Patent. They are custom-designed for integration into Lumicore's accused products and have no substantial non-infringing use.

• Polarization-diverse grating couplers — These optical coupling components correspond to the grating coupler limitations claimed in the '015 Patent and are specially designed for use in the accused products. They have no substantial non-infringing use apart from their integration into infringing transceiver configurations.

Lumicore sells these components and/or the accused products containing them with knowledge that they are especially made or especially adapted for use in an infringing manner. Lumicore's knowledge of the asserted patents is established as set forth in OWS's response to Interrogatory No. 9 above.

INTERROGATORY NO. 12

Interrogatory: Identify the specific claims of each Asserted Patent that OWS contends are infringed by each Accused Product.

Objections: OWS objects to this interrogatory to the extent it is duplicative of OWS's P.R. 3-1 Infringement Contentions, which were served on Lumicore on September 16, 2024 (D.E. 32), and which set forth OWS's claim-by-claim, product-by-product infringement contentions.

Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS asserts infringement of the following claims of the asserted patents:

'847 Patent (U.S. Patent No. 10,234,847): Claims 1, 3, 5, 9, and 14 — asserted against the LumiLink 400G-ZR+ and the LumiLink 800G-DR8.

'193 Patent (U.S. Patent No. 10,891,193): Claims 1, 3, 7, 10, 15, and 18 — asserted against all three accused products: the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR.

'562 Patent (U.S. Patent No. 9,678,562): Claims 1, 4, 6, and 11 — asserted against the LumiLink 400G-ZR+ and the LumiLink 800G-DR8.

'015 Patent (U.S. Patent No. 11,402,015): Claims 1, 5, 8, 12, and 16 — asserted against the LumiLink 800G-DR8 and the LumiEdge 1600G-LR.

OWS asserts literal infringement of all identified claims by the corresponding accused products. Additionally, OWS asserts infringement under the doctrine of equivalents for Claims 3 and 7 of the '193 Patent (specifically with respect to the "coherent detection module" limitation) and for Claim 12 of the '015 Patent (specifically with respect to the "two-dimensional sub-wavelength grating" limitation). Full claim-by-claim, limitation-by-limitation infringement contentions are set forth in OWS's P.R. 3-1 Infringement Contentions and the accompanying detailed Claim Charts served on September 16, 2024.

INTERROGATORY NO. 13

Interrogatory: For each Accused Product, identify the specific structure, feature, or method that OWS contends meets each limitation of each asserted claim.

Objections: OWS objects to this interrogatory to the extent it is duplicative of OWS's P.R. 3-1 Infringement Contentions and supporting Claim Charts, which were served on Lumicore on September 16, 2024, and which provide detailed, limitation-by-limitation mappings of each accused product to each asserted claim. OWS invokes Federal Rule of Civil Procedure 33(d) and directs Lumicore to the Infringement Contentions and Claim Charts, from which the answer to this interrogatory may be derived or ascertained.

Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS refers Lumicore to the detailed Claim Charts served with OWS's P.R. 3-1 Infringement Contentions on September 16, 2024, which map specific structures, features, and methods of each accused product to each limitation of each asserted claim. These Claim Charts provide extensive citations to the accused products' design documentation, published specifications, and the results of the physical teardown analyses performed by Benchmark Semiconductor Analysis, LLC (Lead Engineer: Kevin Ng, 2244 Mission College Boulevard, Santa Clara, California 95054), including the following teardown reports:

• Teardown of the LumiLink 400G-ZR+ (report delivered December 12, 2022)

• Teardown of the LumiLink 800G-DR8 (report delivered June 2023)

• Teardown of the LumiEdge 1600G-LR (report delivered February 2024)

The Benchmark reports confirmed the presence and use of the accused waveguide multiplexer structures, thermal management micro-channels, and polarization-diverse grating couplers in the accused products, each of which corresponds to specific limitations of the asserted claims as detailed in OWS's Claim Charts.

INTERROGATORY NO. 14

Interrogatory: Describe the factual basis for OWS's doctrine of equivalents contentions, including for each claim limitation asserted under the doctrine of equivalents, the function, way, and result of the corresponding element in each Accused Product.

Objections: OWS objects to this interrogatory to the extent it seeks attorney work product or mental impressions regarding OWS's legal theories. OWS further objects to the extent this interrogatory is premature pending the Court's claim construction ruling, which may affect the scope and application of the doctrine of equivalents. OWS additionally objects to the extent this interrogatory is duplicative of OWS's P.R. 3-1 Infringement Contentions, which include doctrine of equivalents contentions.

Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS identifies the following doctrine of equivalents contentions:

'193 Patent, Claims 3 and 7 — "coherent detection module" limitation:

Even if the Court construes the "coherent detection module" limitation in a manner that Lumicore's accused designs do not literally satisfy, OWS contends that the corresponding elements in Lumicore's accused products (the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR) are equivalent to the claimed "coherent detection module" under the function-way-result test:

• Function: The corresponding elements in the accused products perform substantially the same function as the claimed coherent detection module — namely, coherent detection of optical signals to recover both amplitude and phase information.

• Way: The corresponding elements perform this function in substantially the same way — namely, by using integrated photodetectors and digital signal processing circuitry to perform coherent mixing and detection of the received optical signal against a local oscillator reference.

• Result: The corresponding elements achieve substantially the same result — namely, recovery of amplitude, phase, and polarization information from received optical signals, enabling high-capacity data transmission over optical fiber.

'015 Patent, Claim 12 — "two-dimensional sub-wavelength grating" limitation:

Even if the Court construes the "two-dimensional sub-wavelength grating" limitation in a manner that Lumicore's accused designs do not literally satisfy, OWS contends that the corresponding elements in Lumicore's accused products (the LumiLink 800G-DR8 and LumiEdge 1600G-LR) are equivalent to the claimed "two-dimensional sub-wavelength grating" under the function-way-result test:

• Function: The corresponding elements in the accused products perform substantially the same function — namely, coupling light from an optical fiber into a waveguide with polarization diversity.

• Way: The corresponding elements perform this function in substantially the same way — namely, by using a periodic structure with features smaller than the wavelength of light to split incoming polarization states and direct each into a corresponding waveguide path.

• Result: The corresponding elements achieve substantially the same result — namely, efficient coupling of both transverse electric (TE) and transverse magnetic (TM) polarization modes into the photonic integrated circuit.

OWS's full doctrine of equivalents analysis is set forth in its P.R. 3-1 Infringement Contentions and will be further developed and substantiated in the expert report of Dr. Caroline Ashford, due June 15, 2025.

INTERROGATORY NO. 15

Interrogatory: Identify all non-infringing alternatives known to OWS for each of the Accused Products.

Objections: OWS objects to this interrogatory to the extent it improperly seeks to shift to OWS the burden of identifying non-infringing alternatives, which is properly Lumicore's burden in connection with any defense to OWS's lost-profits claim. See BIC Leisure Prods., Inc. v. Windsurfing Int'l, Inc., 1 F.3d 1214, 1218 (Fed. Cir. 1993). OWS further objects to the extent the interrogatory seeks work-product or expert analysis that is properly the subject of expert reports to be served pursuant to Federal Rule of Civil Procedure 26(a)(2).

Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS states that it has analyzed four potential alternative technologies and has concluded that none qualifies as an acceptable non-infringing substitute for the accused products because each alternative lacks one or more key patented features claimed in the asserted patents. The specific alternatives analyzed, the reasons each is inadequate as a non-infringing substitute, and the technical and economic analysis supporting OWS's conclusions will be set forth in the expert reports of Dr. Caroline Ashford (technical analysis of the alternatives) and Dr. Lawrence Keating (damages and market analysis of the alternatives), both due June 15, 2025.

OWS further notes that during her deposition on November 19, 2024, Dr. Sandra Michaud, Lumicore's Chief Technology Officer, could not identify specific non-infringing design alternatives for the accused products when questioned on that subject.

INTERROGATORY NO. 16

Interrogatory: Identify all persons who participated in OWS's decision to file this lawsuit, including the date and circumstances of the decision.

Objections: OWS objects to this interrogatory to the extent it seeks information protected by the attorney-client privilege or the work-product doctrine, including privileged communications and legal advice regarding litigation strategy, the assessment of claims and defenses, and the evaluation of the merits and risks of litigation. OWS will identify the non-privileged participants in the business decision to initiate this litigation, but will not disclose the substance of any privileged communications or legal advice.

Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS identifies the following persons who participated in the business decision to initiate this litigation:

1. Dr. Priya Ramaswamy — Chief Executive Officer, Optiwave Semiconductor Corp.

2. Rebecca Tanaka — General Counsel, Optiwave Semiconductor Corp.

3. Dr. Jian-Wei Huang — Chief Technology Officer, Optiwave Semiconductor Corp.

4. David Leitner — Chief Financial Officer, Optiwave Semiconductor Corp.

5. Franklin Osei — Board Chair, Optiwave Semiconductor Corp.; Managing Partner, Ridgeline Capital Partners, LP, 200 Clarendon Street, 40th Floor, Boston, Massachusetts 02116.

The decision to file this lawsuit was authorized by OWS Board Resolution No. 2024-07. Ridgeline Capital Partners, LP, the majority owner of OWS (holding an approximately 55% equity stake, acquired in 2019 for $780 million), approved the litigation budget of $18.5 million through trial as part of the board authorization. Calderwood & Harkness LLP was formally engaged as lead outside litigation counsel on March 18, 2024, and the Complaint was filed on April 22, 2024 (D.E. 1).

INTERROGATORY NO. 17

Interrogatory: Describe OWS's marking practices for each product that OWS contends practices one or more claims of the Asserted Patents, including the manner, timing, and location of marking.

Objections: OWS objects to this interrogatory to the extent it is premature or seeks detailed marking information beyond that which is required at this stage of the litigatio

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
OPTIWAVE SEMICONDUCTOR CORP.,
Plaintiff and Counterclaim Defendant,
v.
LUMICORE TECHNOLOGIES, INC.,
Defendant and Counterclaim Plaintiff.
Civil Action No. 2:24-cv-00319-JRG
JURY TRIAL DEMANDED
PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S ANSWERS AND OBJECTIONS TO DEFENDANT LUMICORE TECHNOLOGIES, INC.'S FIRST SET OF INTERROGATORIES (Nos. 1–25)
Plaintiff and Counterclaim Defendant Optiwave Semiconductor Corp. ("OWS" or "Plaintiff"), by and through its undersigned counsel, hereby submits its Answers and Objections to Defendant and Counterclaim Plaintiff Lumicore Technologies, Inc.'s ("Lumicore" or "Defendant") First Set of Interrogatories (Nos. 1–25), served on August 30, 2024, pursuant to Federal Rules of Civil Procedure 26 and 33. OWS responds as follows:
I. PRELIMINARY STATEMENT
OWS objects to Lumicore's interrogatories to the extent they seek information protected by the attorney-client privilege, the work-product doctrine, or the joint-defense/common-interest privilege. Nothing in these responses is intended to, nor shall it be construed to, waive any such privilege or protection. By providing these responses, OWS does not waive any privilege or protection with respect to any information, document, or communication, whether or not specifically identified herein.
OWS reserves the right to supplement or amend these responses in accordance with Federal Rule of Civil Procedure 26(e) and the Court's Scheduling Order (D.E. 27, entered August 12, 2024). OWS's obligation to supplement these responses is continuing, and OWS will provide supplemental responses as additional information becomes available through the ongoing discovery process.
Discovery in this action is ongoing. OWS's responses are based on information reasonably available to OWS as of the date of service of these responses. OWS has produced approximately 182,000 documents comprising approximately 1.4 million pages to date in its document productions to Lumicore and continues to collect, review, and produce potentially responsive materials on a rolling basis. OWS's investigation into the facts and circumstances underlying this action is likewise continuing, and OWS's responses should not be understood as a complete recitation of all facts, circumstances, evidence, or contentions that may be relevant to this action.
OWS's responses are made without waiver of, and subject to, any and all objections to the competency, relevance, materiality, authenticity, or admissibility of any information or document referenced herein, all of which objections are expressly reserved and may be asserted at any time, including at trial.
As used in these responses, "OWS" refers to Optiwave Semiconductor Corp. "Lumicore" refers to Lumicore Technologies, Inc. All other capitalized terms not defined herein shall have the meaning ascribed to them in Lumicore's interrogatories or in the pleadings filed in this action, unless otherwise indicated.
II. GENERAL OBJECTIONS
OWS makes the following General Objections, each of which is incorporated by reference into each of OWS's specific responses set forth below as if fully restated therein:
1. OWS objects to the definitions and instructions set forth in Lumicore's First Set of Interrogatories to the extent they seek to impose obligations on OWS beyond those required by the Federal Rules of Civil Procedure, the Local Rules of the United States District Court for the Eastern District of Texas, and the Court's Scheduling Order (D.E. 27, entered August 12, 2024). OWS will respond to each interrogatory in accordance with its obligations under those rules and orders, and not in accordance with any additional or different obligations that Lumicore's instructions may purport to impose.
2. OWS objects to any interrogatory that is overly broad, unduly burdensome, or disproportionate to the needs of the case under Federal Rule of Civil Procedure 26(b)(1), considering the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit.
3. OWS objects to any interrogatory to the extent it calls for the production of documents rather than narrative answers. Where appropriate, OWS will produce responsive documents in accordance with its document production obligations and refers Lumicore to those productions pursuant to Federal Rule of Civil Procedure 33(d), which permits a responding party to specify records from which the answer may be derived or ascertained. OWS's election to exercise its rights under Rule 33(d) shall not be construed as an agreement that any particular interrogatory is proper or that OWS is obligated to provide a more detailed narrative response.
4. OWS objects to any interrogatory to the extent it seeks information already in Lumicore's possession, custody, or control, or that is equally available to Lumicore from public sources, including but not limited to publicly available patent files, SEC filings, published patent applications, and records maintained by the United States Patent and Trademark Office.
5. OWS objects to any interrogatory that contains compound, conjunctive, or disjunctive sub-parts to the extent such sub-parts cause the interrogatory to exceed the twenty-five (25) interrogatory limit established by Federal Rule of Civil Procedure 33(a)(1). OWS reserves the right to treat discrete sub-parts of any interrogatory as separate interrogatories for purposes of the numerical limitation.
6. OWS objects to any interrogatory seeking information that is subject to the Stipulated Protective Order entered by the Court (D.E. 30, entered August 19, 2024), which establishes three tiers of confidentiality designations: "Confidential," "Highly Confidential — Attorneys' Eyes Only," and "Highly Confidential — Source Code." OWS will designate information responsive to Lumicore's interrogatories in accordance with the terms of the Stipulated Protective Order, and any such designations are without prejudice to OWS's right to challenge or modify such designations in the future.
7. These General Objections are incorporated by reference into each specific response set forth below, as if fully restated in each such response. The assertion of specific objections in connection with any particular interrogatory shall not be construed as a waiver of these General Objections or of any other objection available to OWS, whether or not expressly stated.
III. INTERROGATORY RESPONSES
INTERROGATORY NO. 1
Interrogatory: Identify each person involved in the conception and/or development of the inventions claimed in each of the Asserted Patents, and for each such person, state the nature and extent of his or her involvement.
Objections: OWS objects to this interrogatory to the extent it is overbroad, as the phrase "involved in the conception and/or development" could be construed to encompass every person who had any tangential involvement in the research, development, testing, or commercialization of the underlying technology. OWS further objects to the extent this interrogatory seeks information protected by the attorney-client privilege or work-product doctrine relating to patent prosecution strategy, the selection of named inventors, or legal advice rendered in connection with the drafting and filing of patent applications. OWS will respond by identifying the named inventors and key contributors to the conception and development of the inventions claimed in the asserted patents, to the extent such information is not privileged.
Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS identifies the following persons who were involved in the conception and/or development of the inventions claimed in the asserted patents:
U.S. Patent No. 10,234,847 ("the '847 Patent"): The named inventors of the '847 Patent are Dr. Jian-Wei Huang, Chief Technology Officer of Optiwave Semiconductor Corp., and Dr. Nikolai Petrov, Vice President of Engineering, Photonics Division, of Optiwave Semiconductor Corp. Dr. Huang and Dr. Petrov conceived the inventions claimed in the '847 Patent in connection with their work at OWS's Photonics Division design team, located at OWS's Santa Clara headquarters at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054. Key contributors to the conception and development of the inventions claimed in the '847 Patent include additional members of OWS's Photonics Division design team at the Santa Clara headquarters, whose identities will be supplemented as OWS's investigation continues.
U.S. Patent No. 10,891,193 ("the '193 Patent"): The named inventors of the '193 Patent are Dr. Jian-Wei Huang and Dr. Nikolai Petrov. The '193 Patent claims priority to Provisional Application No. 62/499,117, filed April 7, 2017. The inventions claimed in the '193 Patent were conceived and developed in the course of OWS's ongoing silicon-photonics research program at the Santa Clara headquarters. The conception of the inventions occurred in or about late 2016 through early 2017, culminating in the filing of the provisional application.
U.S. Patent No. 9,678,562 ("the '562 Patent"): The '562 Patent was originally assigned to Solara Optics, Inc., a California corporation. The named inventors of the '562 Patent include personnel of Solara Optics, Inc. OWS refers Lumicore to the face of the '562 Patent and its prosecution history for the complete listing of named inventors. Gregory Falk, the former Vice President of Engineering at Solara Optics, Inc., was involved in overseeing and directing the development of the inventions claimed in the '562 Patent. Mr. Falk is currently an independent consultant and has been retained by OWS as an industry expert in this action. OWS acquired the '562 Patent from Solara Optics, Inc. pursuant to an Asset Purchase Agreement dated June 15, 2018, as described more fully in response to Interrogatory No. 2 below.
U.S. Patent No. 11,402,015 ("the '015 Patent"): The named inventors of the '015 Patent are Dr. Jian-Wei Huang and Dr. Nikolai Petrov. The '015 Patent shares Provisional Application No. 62/499,117 (filed April 7, 2017) with the '193 Patent and was developed as part of the same research program at OWS's Photonics Division in Santa Clara, California.
OWS further identifies Dr. Martin Chu of Cascade IP Advisors, LLC, located at 1550 Crystal Drive, Suite 600, Arlington, Virginia 22202, as the lead patent prosecution attorney who prosecuted all four asserted patents before the United States Patent and Trademark Office. Dr. Chu's involvement pertained to the preparation, filing, and prosecution of the patent applications, and OWS objects to providing further details regarding Dr. Chu's involvement to the extent such information is protected by the attorney-client privilege.
OWS reserves the right to supplement this response as its investigation continues and as additional information becomes available.
INTERROGATORY NO. 2
Interrogatory: Identify the complete chain of title for each Asserted Patent from the date of filing through the present, including all assignments, transfers, licenses, encumbrances, or other changes in ownership.
Objections: OWS incorporates its General Objections. OWS has no additional objections specific to this interrogatory.
Answer: Subject to and without waiving the General Objections incorporated herein, OWS identifies the following chain of title for each asserted patent:
'847 Patent (U.S. Patent No. 10,234,847): The application that resulted in the '847 Patent was filed on September 14, 2016. The original assignee was Optiwave Semiconductor Corp. The '847 Patent issued on March 19, 2019, to Optiwave Semiconductor Corp. The '847 Patent has remained assigned to OWS continuously since its filing date, and no assignments, transfers, encumbrances, or other changes in ownership have occurred. All maintenance fees due on the '847 Patent are current. The '847 Patent and the '562 Patent are in the same patent family and share a continuation relationship.
'193 Patent (U.S. Patent No. 10,891,193): The application that resulted in the '193 Patent was filed on April 7, 2017, claiming priority to Provisional Application No. 62/499,117, filed April 7, 2017. The original assignee was Optiwave Semiconductor Corp. The '193 Patent issued on January 12, 2021, to Optiwave Semiconductor Corp. The '193 Patent has remained assigned to OWS continuously since its filing date, and no assignments, transfers, encumbrances, or other changes in ownership have occurred. All maintenance fees due on the '193 Patent are current. The '193 Patent and the '015 Patent share a common provisional application, Provisional Application No. 62/499,117.
'562 Patent (U.S. Patent No. 9,678,562): The application that resulted in the '562 Patent was filed on November 22, 2014. The original assignee was Solara Optics, Inc. The '562 Patent issued on June 13, 2017, to Solara Optics, Inc. On June 15, 2018, Solara Optics, Inc. assigned the '562 Patent to Optiwave Semiconductor Corp. pursuant to an Asset Purchase Agreement ("APA") dated June 15, 2018, for a total purchase price of $34.5 million. The APA transferred the '562 Patent and eleven (11) other United States patents (twelve patents total) from Solara Optics, Inc. to OWS, along with related patent applications, technical documentation, and associated know-how. The assignment of the '562 Patent from Solara Optics, Inc. to OWS was duly recorded with the United States Patent and Trademark Office. Solara Optics, Inc. was subsequently dissolved in 2020. Since the June 15, 2018 assignment, the '562 Patent has remained assigned to OWS, and no further assignments, transfers, encumbrances, or other changes in ownership have occurred. All maintenance fees due on the '562 Patent are current.
'015 Patent (U.S. Patent No. 11,402,015): The application that resulted in the '015 Patent was filed on August 30, 2019, claiming priority to Provisional Application No. 62/499,117, filed April 7, 2017. The original assignee was Optiwave Semiconductor Corp. The '015 Patent issued on August 2, 2022, to Optiwave Semiconductor Corp. The '015 Patent has remained assigned to OWS continuously since its filing date, and no assignments, transfers, encumbrances, or other changes in ownership have occurred. All maintenance fees due on the '015 Patent are current.
OWS refers Lumicore to the recorded assignment documents at the United States Patent and Trademark Office, copies of which have been produced in OWS's document productions (Bates Nos. OWS-000001 through OWS-000048), and to the Solara Optics Asset Purchase Agreement, which has been produced at Bates Nos. OWS-004500 through OWS-004612, designated as Highly Confidential — Attorneys' Eyes Only under the Stipulated Protective Order.
INTERROGATORY NO. 3
Interrogatory: Identify all products manufactured, sold, offered for sale, imported, or used by OWS that allegedly practice or embody one or more claims of the Asserted Patents.
Objections: OWS objects to this interrogatory to the extent it seeks to impose on OWS any obligation to prove that its own products practice the asserted patents as a precondition to enforcing those patents against Lumicore. Whether or not OWS's own products practice the asserted patents is not a prerequisite to OWS's right to enforce its patents and has no bearing on Lumicore's infringement. OWS further objects to the extent this interrogatory is premature insofar as it relates to issues of marking and constructive notice under 35 U.S.C. § 287, which are subject to ongoing factual development.
Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS identifies the following product families as embodying or practicing one or more claims of the asserted patents:
• OWS-400ZR transceiver module family — OWS contends that products in this family practice one or more claims of the '847 Patent, the '193 Patent, and the '562 Patent.
• OWS-800XR transceiver module family — OWS contends that products in this family practice one or more claims of the '847 Patent, the '193 Patent, the '562 Patent, and the '015 Patent.
• OWS-1600DR transceiver module family — OWS contends that products in this family practice one or more claims of the '193 Patent and the '015 Patent.
These products are manufactured by OWS through its contract foundry partners and are sold to hyperscale data-center operators and telecommunications companies in the United States and internationally. OWS's fiscal year 2023 revenue was $487.3 million, as reflected in OWS's audited financial statements prepared by Gresham & Whitfield LLP (San Jose, California office). Of that total, approximately $310 million is attributable to products that practice one or more claims of the asserted patents. OWS has approximately 1,250 employees and is headquartered in Santa Clara, California.
OWS reserves the right to supplement this response as additional product information becomes available and as its investigation continues.
INTERROGATORY NO. 4
Interrogatory: Identify all license agreements, settlement agreements, or other agreements involving one or more of the Asserted Patents, including the identity of the licensee, the date of the agreement, the financial terms, and the patents covered.
Objections: OWS objects to this interrogatory to the extent it seeks confidential and commercially sensitive business information that is subject to the protections of the Stipulated Protective Order (D.E. 30, entered August 19, 2024). OWS will designate responsive information as "Highly Confidential — Attorneys' Eyes Only" as appropriate under the terms of the Protective Order. OWS further objects to the extent this interrogatory seeks information regarding agreements that may not be comparable to the hypothetical license at issue in this case and therefore may be of limited relevance.
Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS identifies the following license agreements involving one or more of the asserted patents:
1. OWS – Terralink Semiconductor License Agreement (2020): In 2020, OWS entered into a license agreement with Terralink Semiconductor, Inc. The agreement provides for a running royalty of 6.5% on licensed product revenue. Terralink's licensed revenue under this agreement has been approximately $45 million to date. The license covers the '847 Patent and the '562 Patent.
2. OWS – NovaWave Corp. License Agreement (2021): In 2021, OWS entered into a license agreement with NovaWave Corp. The agreement provides for a running royalty of 9.0% on licensed product revenue. NovaWave's licensed revenue under this agreement has been approximately $22 million to date. The license covers the '847 Patent, the '193 Patent, and the '562 Patent.
3. OWS – Helix Integrated Photonics License Agreement (2022): In 2022, OWS entered into a license agreement with Helix Integrated Photonics, Inc. The agreement provides for a running royalty of 7.75% on licensed product revenue, plus an upfront lump-sum payment of $2.5 million. Helix's licensed revenue under this agreement has been approximately $68 million to date. The license covers all four asserted patents — the '847 Patent, the '193 Patent, the '562 Patent, and the '015 Patent.
Copies of each of these license agreements have been produced in OWS's document productions and have been designated as Highly Confidential — Attorneys' Eyes Only under the Stipulated Protective Order.
OWS further identifies that FairPoint Licensing Group, LLC, located at 500 Sansome Street, Suite 1400, San Francisco, California 94111 (Managing Director: Angela Reeves), served as OWS's licensing agent and conducted pre-suit licensing outreach to Lumicore on OWS's behalf. FairPoint's outreach to Lumicore included two licensing and notice letters (dated January 15, 2023, and May 15, 2023, respectively) and one in-person licensing meeting (held on April 20, 2023, in Austin, Texas). Despite this outreach, no license was executed with Lumicore, and Lumicore declined to take a license on July 10, 2023.
INTERROGATORY NO. 5
Interrogatory: Identify and describe each damages theory and basis for all damages sought by OWS in this action, including the methodology, data sources, assumptions, and calculations underlying each theory.
Objections: OWS objects to this interrogatory to the extent it is premature given that expert reports on damages are not due until June 15, 2025, pursuant to the Court's Scheduling Order (D.E. 27, entered August 12, 2024). OWS further objects to the extent this interrogatory seeks detailed financial modeling, expert analysis, assumptions, or calculations that are properly the subject of expert reports to be served pursuant to Federal Rule of Civil Procedure 26(a)(2), and that OWS's damages expert, Dr. Lawrence Keating of Meridian Economic Consulting Group, LLC, has not yet completed his analysis. OWS will supplement this response following the service of its expert reports. OWS further objects to the extent this interrogatory calls for premature disclosure of work product or attorney mental impressions regarding litigation strategy.
Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS identifies the following damages theories:
Theory 1 — Lost Profits (Panduit Analysis):
OWS contends that it is entitled to lost-profit damages arising from sales it lost directly to Lumicore's accused products. OWS's lost-profits theory is based on the four-factor test articulated in Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152 (6th Cir. 1978), and its progeny. OWS contends that all four Panduit factors are satisfied:
(1) Demand for the patented product: OWS's fiscal year 2023 revenue of $487.3 million, of which approximately $310 million is attributable to products practicing the asserted patents, demonstrates robust and sustained market demand for the patented technology.
(2) Absence of acceptable non-infringing substitutes: OWS has analyzed four potential alternative technologies that might serve as substitutes for the accused products and has concluded that each alternative lacks one or more key patented features claimed in the asserted patents, rendering none an acceptable non-infringing substitute. The specific alternatives and the deficiencies of each will be detailed in the expert reports of Dr. Caroline Ashford and Dr. Lawrence Keating.
(3) Manufacturing and marketing capability: OWS had and has the manufacturing capacity — through its established foundry partners — and the marketing and sales infrastructure to serve the demand that was diverted to Lumicore's accused products.
(4) Amount of profit OWS would have made: OWS's gross margin on the competing products (OWS-400ZR and OWS-800XR transceiver module families) is 47.3%, as reflected in OWS's internal financial records produced in discovery.
OWS estimates that Lumicore's projected accused-product revenue for the period from the third quarter of 2022 through the fourth quarter of 2025 (the projected trial date) is approximately $714.6 million. OWS contends that market-share displacement attributable to Lumicore's infringement is approximately 38.2%. Based on these figures, OWS's preliminary lost-profit damages estimate is approximately $128.9 million (calculated as $714.6 million × 38.2% × 47.3%).
Theory 2 — Reasonable Royalty (Georgia-Pacific Analysis):
For sales where lost profits cannot be demonstrated — specifically, sales to customers that OWS could not have served or where the causal nexus between infringement and lost sales cannot be established — OWS asserts a reasonable royalty of 8.5% of accused-product net sales. The hypothetical negotiation date is the second quarter of 2022, which is the period immediately preceding Lumicore's commercial launch of the first accused product, the LumiLink 400G-ZR+. The proposed 8.5% royalty rate is supported by the comparable license agreements identified in response to Interrogatory No. 4 above (with rates ranging from 6.5% to 9.0%) and by an analysis of all fifteen factors set forth in Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970). OWS's preliminary reasonable-royalty damages estimate is approximately $37.5 million, calculated as the portion of Lumicore's accused-product revenue not captured by the lost-profits analysis ($714.6 million − ($714.6 million × 38.2%) = approximately $441.6 million), multiplied by the 8.5% royalty rate ($441.6 million × 8.5% ≈ $37.5 million).
Theory 3 — Enhanced Damages for Willful Infringement:
OWS seeks enhanced damages pursuant to 35 U.S.C. § 284 and in accordance with the Supreme Court's decision in Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), for the period following Lumicore's receipt of actual notice of the asserted patents. Actual notice was provided via FairPoint Licensing Group's January 15, 2023 licensing letter, which identified the '847, '193, and '562 Patents and described Lumicore's potential infringement. OWS's post-notice lost-profit damages are approximately $109.2 million, reflecting the portion of lost profits attributable to the period after January 15, 2023. OWS seeks a multiplier of up to two times (2×) on the post-notice lost-profits component, based on the egregiousness of Lumicore's conduct, including its continued and expanded infringement after notice and its refusal to engage in good-faith licensing negotiations.
Aggregate Damages Demand:
OWS's aggregate damages demand is approximately $210.0 million, which is a blended and rounded figure incorporating the three theories described above, as pled in the Complaint (D.E. 1, filed April 22, 2024). This figure is preliminary and subject to refinement based on ongoing discovery, updated financial data, and the expert analysis of Dr. Lawrence Keating of Meridian Economic Consulting Group, LLC (233 South Wacker Drive, Suite 4400, Chicago, Illinois 60606), who will present the full damages analysis, including multiple recovery scenarios and sensitivity analyses, in his expert report due June 15, 2025.
In addition to monetary damages, OWS seeks a permanent injunction barring Lumicore from making, using, selling, offering to sell, or importing into the United States the accused products or any colorable imitations thereof, as well as pre-judgment and post-judgment interest, costs, and attorneys' fees to the extent warranted under 35 U.S.C. § 285.
INTERROGATORY NO. 6
Interrogatory: Identify all prior art known to OWS relating to the Asserted Patents, including the date on which OWS first became aware of each item of prior art.
Objections: OWS objects to this interrogatory as overly broad and unduly burdensome, as the phrase "relating to the Asserted Patents" is vague, ambiguous, and could encompass an unlimited range of prior art across the entire field of silicon photonics and optical communications. OWS further objects to the extent this interrogatory improperly seeks to shift to OWS the burden of proving invalidity, which is properly Lumicore's burden under 35 U.S.C. § 282. OWS additionally objects to the extent the interrogatory seeks information that is contained in the prosecution histories of the asserted patents, which are publicly available through the United States Patent and Trademark Office's Patent Application Information Retrieval ("PAIR") system and have been produced in OWS's document productions.
Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS refers Lumicore to the prosecution histories of each of the four asserted patents, which identify all prior art references that were considered by the USPTO examiners during the prosecution of the respective patent applications. These prosecution histories have been produced in OWS's document productions and are also publicly available through the USPTO's PAIR system. OWS's patent prosecution counsel, Dr. Martin Chu of Cascade IP Advisors, LLC, fulfilled all disclosure obligations imposed by 37 C.F.R. § 1.56 (the duty of candor) during the prosecution of each of the asserted patents.
OWS is aware that Lumicore served its invalidity contentions on October 14, 2024 (D.E. 36), in which Lumicore identified twenty-three (23) prior-art references that Lumicore contends render the asserted claims invalid. OWS's technical expert, Dr. Caroline Ashford, is analyzing those references as part of her invalidity rebuttal analysis, and OWS reserves the right to supplement this response following the completion of Dr. Ashford's analysis and the preparation of her expert report, due June 15, 2025.
INTERROGATORY NO. 7
Interrogatory: Describe the prosecution history of each Asserted Patent, including all rejections, amendments, and arguments made to the USPTO during prosecution.
Objections: OWS objects to this interrogatory to the extent it seeks a narrative recitation of prosecution histories that are publicly available, voluminous, and equally accessible to Lumicore through the USPTO's PAIR system. OWS further objects on the ground that a narrative summary of prosecution history is burdensome and disproportionate to the needs of the case given the public availability of the underlying records. OWS invokes Federal Rule of Civil Procedure 33(d) and directs Lumicore to the prosecution history files produced in OWS's document productions and publicly available through the USPTO PAIR system, from which the answer to this interrogatory may be derived or ascertained.
Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS provides the following summary of the prosecution history for each asserted patent:
'847 Patent (U.S. Patent No. 10,234,847):
The application that resulted in the '847 Patent was filed on September 14, 2016, with Optiwave Semiconductor Corp. as the original assignee. Prosecution was conducted by Dr. Martin Chu of Cascade IP Advisors, LLC. The '847 Patent is in the same patent family as the '562 Patent and shares a continuation relationship with the '562 Patent. During prosecution, OWS received at least one Office Action from the USPTO examiner. In response, the applicant made arguments distinguishing the cited prior art and, where appropriate, narrowed certain claim language to overcome the examiner's rejections. The '847 Patent issued on March 19, 2019, with all claims allowed by the examiner. OWS refers Lumicore to the complete prosecution history file for the '847 Patent, which has been produced in OWS's document productions at Bates Nos. OWS-001001 through OWS-001342.
'193 Patent (U.S. Patent No. 10,891,193):
The application that resulted in the '193 Patent was filed on April 7, 2017, claiming priority to Provisional Application No. 62/499,117, filed April 7, 2017. Prosecution was conducted by Dr. Martin Chu of Cascade IP Advisors, LLC. During prosecution, the USPTO examiner issued a rejection under 35 U.S.C. § 102, citing Takahashi et al., "Dense WDM Silicon Photonic MUX," published in IEEE Photonics Technology Letters in March 2014. In response to the examiner's rejection, the applicant narrowed the "coherent detection module" limitation in the claims and provided arguments distinguishing the Takahashi reference. The examiner was persuaded, and the '193 Patent issued on January 12, 2021, with all claims allowed. OWS refers Lumicore to the complete prosecution history file for the '193 Patent, which has been produced in OWS's document productions at Bates Nos. OWS-001343 through OWS-001798.
'562 Patent (U.S. Patent No. 9,678,562):
The application that resulted in the '562 Patent was filed on November 22, 2014, with Solara Optics, Inc. as the original assignee. Prosecution was conducted by Dr. Martin Chu of Cascade IP Advisors, LLC. During prosecution, the USPTO examiner considered prior art relating to thermal management in photonic integrated circuits. The applicant made arguments distinguishing the cited prior art and demonstrating the novelty and non-obviousness of the claimed inventions. The '562 Patent issued on June 13, 2017, with all claims allowed. As described in response to Interrogatory No. 2 above, OWS acquired the '562 Patent from Solara Optics, Inc. pursuant to an Asset Purchase Agreement dated June 15, 2018, which transferred the '562 Patent and eleven other patents for a total purchase price of $34.5 million. OWS refers Lumicore to the complete prosecution history file for the '562 Patent, which has been produced in OWS's document productions at Bates Nos. OWS-001799 through OWS-002145.
'015 Patent (U.S. Patent No. 11,402,015):
The application that resulted in the '015 Patent was filed on August 30, 2019, claiming priority to Provisional Application No. 62/499,117, filed April 7, 2017, which is the same provisional application shared with the '193 Patent. Prosecution was conducted by Dr. Martin Chu of Cascade IP Advisors, LLC. During prosecution, the USPTO examiner issued a rejection under 35 U.S.C. § 103, combining U.S. Patent No. 8,412,007 (Bergmann) with PCT Publication No. PCT/EP2015/071234 (Simonsen). In response, the applicant made a narrowing amendment to the "two-dimensional sub-wavelength grating" limitation in the claims and argued non-obviousness over the combination of references. The examiner was persuaded, and the '015 Patent issued on August 2, 2022, with all claims allowed. OWS refers Lumicore to the complete prosecution history file for the '015 Patent, which has been produced in OWS's document productions at Bates Nos. OWS-002146 through OWS-002489.
INTERROGATORY NO. 8
Interrogatory: Identify all persons with knowledge of the alleged infringement by Lumicore, including the subject matter of each person's knowledge.
Objections: OWS objects to this interrogatory to the extent it is overly broad and duplicative of OWS's Initial Disclosures under Federal Rule of Civil Procedure 26(a)(1), which were served on August 19, 2024 (D.E. 32), and which identified individuals likely to have discoverable information relevant to OWS's claims. OWS incorporates its Initial Disclosures by reference and identifies additional individuals below.
Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS identifies the following persons with knowledge of the alleged infringement by Lumicore:
1. Dr. Jian-Wei Huang — Chief Technology Officer, Optiwave Semiconductor Corp., 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054. Dr. Huang has knowledge of the patented technology underlying each of the four asserted patents, OWS's product design and development process, and technical comparisons between OWS's products and Lumicore's accused products. Dr. Huang was deposed on November 5, 2024.
2. Dr. Nikolai Petrov — Vice President of Engineering, Photonics Division, Optiwave Semiconductor Corp., 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054. Dr. Petrov has knowledge of the patented technology, OWS's product development history, the technical operation of the patented inventions, and the technical analysis of Lumicore's accused products.
3. Rebecca Tanaka — General Counsel, Optiwave Semiconductor Corp., 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054. Ms. Tanaka has knowledge of pre-suit investigations of Lumicore's products, OWS's licensing outreach efforts, the engagement of FairPoint Licensing Group as licensing agent, the engagement of litigation counsel, and overall case management and strategy, subject to the attorney-client privilege and work-product doctrine.
4. Kevin Ng — Lead Engineer, Benchmark Semiconductor Analysis, LLC, 2244 Mission College Boulevard, Santa Clara, California 95054. Mr. Ng conducted detailed teardown and reverse-engineering analyses of Lumicore's accused products, including: (a) the LumiLink 400G-ZR+ (teardown report delivered December 12, 2022); (b) the LumiLink 800G-DR8 (teardown report delivered June 2023); and (c) the LumiEdge 1600G-LR (teardown report delivered February 2024). Mr. Ng has knowledge of the internal structures, components, and operation of each accused product. Mr. Ng was deposed on January 7, 2025.
5. Angela Reeves — Managing Director, FairPoint Licensing Group, LLC, 500 Sansome Street, Suite 1400, San Francisco, California 94111. Ms. Reeves has knowledge of OWS's pre-suit licensing outreach to Lumicore, including the content and purpose of the January 15, 2023 and May 15, 2023 licensing letters and the April 20, 2023 in-person licensing meeting held in Austin, Texas. Ms. Reeves was deposed on December 10, 2024.
6. Gregory Falk — Independent consultant; former Vice President of Engineering, Solara Optics, Inc. Mr. Falk has knowledge of the development of the '562 Patent, Solara Optics's silicon-photonics technology, the industry context and competitive landscape for silicon-photonic transceivers, and the commercial significance of the patented innovations.
7. Dr. Caroline Ashford — Professor of Electrical Engineering & Photonics, Northfield Institute of Technology, Evanston, Illinois. Dr. Ashford has been retained as OWS's technical and infringement expert in this action. Dr. Ashford will provide expert opinions on infringement (literal and under the doctrine of equivalents) and validity (rebuttal of Lumicore's invalidity contentions) in her expert reports, which are due June 15, 2025.
8. Dr. Lawrence Keating — Managing Director, Meridian Economic Consulting Group, LLC, 233 South Wacker Drive, Suite 4400, Chicago, Illinois 60606. Dr. Keating has been retained as OWS's damages expert in this action. Dr. Keating will provide expert analysis and testimony on lost profits, reasonable royalty, and enhanced damages in his expert report, which is due June 15, 2025.
9. Melissa Chen — Former engineer at Lumicore Technologies, Inc.; currently employed at Veridian Photonics, Inc. OWS has knowledge and belief that Ms. Chen was a member of Lumicore's LumiLink 400G-ZR+ design team and has knowledge regarding Lumicore's awareness of OWS's published patent applications during the product design phase in 2021–2022. A third-party subpoena has been served on Ms. Chen (January 22, 2025), and OWS anticipates obtaining her testimony in connection with the willful infringement issues in this case.
OWS reserves the right to supplement this list as its investigation continues and as additional fact and expert witnesses are identified.
INTERROGATORY NO. 9
Interrogatory: Identify the factual basis for OWS's allegation that Lumicore's infringement was willful, including all facts, circumstances, and evidence supporting OWS's willfulness claim.
Objections: OWS objects to this interrogatory to the extent it seeks information protected by the attorney-client privilege or the work-product doctrine, including internal legal assessments, litigation strategy, and privileged communications regarding OWS's evaluation of Lumicore's willfulness. OWS further objects to the extent this interrogatory is premature, as willful infringement evidence will be more fully developed through ongoing expert and fact discovery, including the resolution of OWS's pending Motion to Compel Production of Opinion-of-Counsel Letters (D.E. 40, filed October 21, 2024).
Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS identifies the following factual bases for its allegation of willful infringement:
1. Pre-Suit Notice Letters: FairPoint Licensing Group, LLC, acting as OWS's authorized licensing agent, sent a detailed licensing and notice letter to Lumicore's General Counsel, Raymond Bautista, on January 15, 2023. The January 15, 2023 letter identified the '847 Patent, the '193 Patent, and the '562 Patent by number, described the patented technology and its relevance to Lumicore's LumiLink 400G-ZR+ product, and put Lumicore on actual notice of those patents and their potential infringement. A second letter was sent on May 15, 2023, adding the '015 Patent (which had issued on August 2, 2022) and expanding the scope of the accused products to include Lumicore's LumiLink 800G-DR8 module. Both letters offered Lumicore the opportunity to negotiate a license on commercially reasonable terms.
2. In-Person Meeting: On April 20, 2023, Angela Reeves of FairPoint Licensing Group and Rebecca Tanaka of OWS met in person with Raymond Bautista, Lumicore's General Counsel, and Catherine "Kate" Rourke of Hawthorne Vega & Cruz LLP, Lumicore's outside counsel, at a meeting held in Austin, Texas. During this meeting, OWS's representatives presented claim charts mapping the asserted patents to Lumicore's accused products and offered to negotiate a license. According to Ms. Reeves's deposition testimony (December 10, 2024 deposition), Lumicore's representatives acknowledged receipt of the patents and the claim charts but showed "no interest in negotiating" a license.
3. Lumicore's Declination: On July 10, 2023, Lumicore, through its outside counsel at Hawthorne Vega & Cruz LLP, formally declined to take a license, stating that it had obtained "competent legal opinions" concluding that its products do not infringe the asserted patents. Lumicore has refused to produce those opinion-of-counsel letters in this litigation, asserting attorney-client privilege. OWS's Motion to Compel Production of Opinion-of-Counsel Letters (D.E. 40, filed October 21, 2024) remains pending before the Court.
4. Continued and Expanded Infringement: After receiving actual notice of the asserted patents and declining to take a license, Lumicore launched its LumiEdge 1600G-LR transceiver module in the fourth quarter of 2023. OWS alleges that the LumiEdge 1600G-LR infringes the '193 Patent and the '015 Patent. Lumicore's decision to launch a new accused product after receiving notice of the asserted patents and declining to engage in licensing negotiations is evidence of deliberate and willful infringement.
5. Design-Phase Awareness of OWS Patents: OWS has evidence that during the design phase of the LumiLink 400G-ZR+ in 2021–2022, Lumicore's design team accessed and reviewed OWS's published patent applications, including specifically Published Application No. 2018/0123456, which corresponds to the '193 Patent. OWS's information and belief regarding this fact is based in part on knowledge obtained from Melissa Chen, a former Lumicore engineer who was a member of the LumiLink 400G-ZR+ design team and who is now employed at Veridian Photonics, Inc.
6. Deposition Admissions: Dr. Sandra Michaud, Lumicore's Chief Technology Officer, admitted during her deposition on November 19, 2024 that she personally reviewed OWS Published Application No. 2018/0123456 (corresponding to the '193 Patent) during the LumiLink 400G-ZR+ design phase. While Dr. Michaud denied knowledge of the issued patents until she received the FairPoint licensing letter, her admission that she reviewed the published application during the design phase is evidence that Lumicore was aware of OWS's claimed technology before launching its accused products. Additionally, Raymond Bautista, Lumicore's General Counsel, confirmed during his deposition on December 3, 2024 that he received FairPoint's January 15, 2023 notice letter and acknowledged that he forwarded it to outside counsel within three business days of receipt. Mr. Bautista further admitted that no formal design-around analysis was commissioned before the launch of the LumiEdge 1600G-LR product in the fourth quarter of 2023.
INTERROGATORY NO. 10
Interrogatory: Identify the factual basis for OWS's claim of induced infringement, including the identity of the persons or entities alleged to have been induced to infringe, the specific acts of inducement, and the specific claims alleged to have been induced.
Objections: OWS objects to this interrogatory to the extent it seeks legal conclusions rather than factual information. OWS further objects to the extent this interrogatory seeks information protected by the work-product doctrine, including OWS's legal analysis and theories regarding induced infringement.
Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS contends that Lumicore has induced infringement of all four asserted patents — the '847 Patent, the '193 Patent, the '562 Patent, and the '015 Patent — by actively encouraging, instructing, and directing its customers to use, integrate, and deploy the accused products (the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR) in data-center and telecommunications environments in a manner that practices the methods claimed in the asserted patents.
Specifically, Lumicore provides its customers with technical documentation, application guides, integration support materials, installation manuals, and technical training programs that direct and instruct customers in using the accused products in an infringing manner. Lumicore also provides field-application engineering support to assist customers in deploying the accused products in configurations that practice the patented methods. Lumicore undertakes these activities with knowledge of the asserted patents, which was established through FairPoint Licensing Group's licensing and notice letters dated January 15, 2023 and May 15, 2023, and the April 20, 2023 in-person licensing meeting in Austin, Texas.
OWS identifies the following Lumicore customers with facilities in this District as entities that have been induced to infringe by Lumicore's actions:
• Pinnacle Data Systems, LLC, 1800 Judson Road, Longview, Texas 75601
• Frontier Cloud Services, Inc., 400 East Houston Street, marshall, Texas 75670
• CrossPoint Networking Corp., 7500 Dallas Parkway, Suite 200, Plano, Texas 75024
OWS reserves the right to identify additional induced infringers as discovery continues.
INTERROGATORY NO. 11
Interrogatory: Identify the factual basis for OWS's claim of contributory infringement, including the identity of the components or features alleged to constitute a material part of the patented inventions and the basis for OWS's contention that those components have no substantial non-infringing use.
Objections: OWS incorporates its objections stated in response to Interrogatory No. 10. OWS further objects to the extent this interrogatory seeks legal conclusions regarding the application of 35 U.S.C. § 271(c) to the facts of this case, or to the extent it seeks information protected by the work-product doctrine.
Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS contends that specific components of Lumicore's accused products constitute material parts of the patented inventions, are especially adapted for use in an infringing manner, have no substantial non-infringing use, and are not staple articles of commerce suitable for substantial non-infringing use. The specific components at issue include:
• Silicon-photonic waveguide multiplexer modules — These components are integral to the operation of the accused products and directly correspond to limitations of the asserted claims. They are specifically designed and configured to perform the multiplexing functions claimed in the asserted patents and have no substantial non-infringing use apart from integration into infringing transceiver modules.
• Embedded micro-channel heat sinks — These thermal management components are especially adapted for use in the photonic integrated circuits of the accused products and correspond to the thermal management limitations claimed in the '562 Patent. They are custom-designed for integration into Lumicore's accused products and have no substantial non-infringing use.
• Polarization-diverse grating couplers — These optical coupling components correspond to the grating coupler limitations claimed in the '015 Patent and are specially designed for use in the accused products. They have no substantial non-infringing use apart from their integration into infringing transceiver configurations.
Lumicore sells these components and/or the accused products containing them with knowledge that they are especially made or especially adapted for use in an infringing manner. Lumicore's knowledge of the asserted patents is established as set forth in OWS's response to Interrogatory No. 9 above.
INTERROGATORY NO. 12
Interrogatory: Identify the specific claims of each Asserted Patent that OWS contends are infringed by each Accused Product.
Objections: OWS objects to this interrogatory to the extent it is duplicative of OWS's P.R. 3-1 Infringement Contentions, which were served on Lumicore on September 16, 2024 (D.E. 32), and which set forth OWS's claim-by-claim, product-by-product infringement contentions.
Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS asserts infringement of the following claims of the asserted patents:
'847 Patent (U.S. Patent No. 10,234,847): Claims 1, 3, 5, 9, and 14 — asserted against the LumiLink 400G-ZR+ and the LumiLink 800G-DR8.
'193 Patent (U.S. Patent No. 10,891,193): Claims 1, 3, 7, 10, 15, and 18 — asserted against all three accused products: the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR.
'562 Patent (U.S. Patent No. 9,678,562): Claims 1, 4, 6, and 11 — asserted against the LumiLink 400G-ZR+ and the LumiLink 800G-DR8.
'015 Patent (U.S. Patent No. 11,402,015): Claims 1, 5, 8, 12, and 16 — asserted against the LumiLink 800G-DR8 and the LumiEdge 1600G-LR.
OWS asserts literal infringement of all identified claims by the corresponding accused products. Additionally, OWS asserts infringement under the doctrine of equivalents for Claims 3 and 7 of the '193 Patent (specifically with respect to the "coherent detection module" limitation) and for Claim 12 of the '015 Patent (specifically with respect to the "two-dimensional sub-wavelength grating" limitation). Full claim-by-claim, limitation-by-limitation infringement contentions are set forth in OWS's P.R. 3-1 Infringement Contentions and the accompanying detailed Claim Charts served on September 16, 2024.
INTERROGATORY NO. 13
Interrogatory: For each Accused Product, identify the specific structure, feature, or method that OWS contends meets each limitation of each asserted claim.
Objections: OWS objects to this interrogatory to the extent it is duplicative of OWS's P.R. 3-1 Infringement Contentions and supporting Claim Charts, which were served on Lumicore on September 16, 2024, and which provide detailed, limitation-by-limitation mappings of each accused product to each asserted claim. OWS invokes Federal Rule of Civil Procedure 33(d) and directs Lumicore to the Infringement Contentions and Claim Charts, from which the answer to this interrogatory may be derived or ascertained.
Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS refers Lumicore to the detailed Claim Charts served with OWS's P.R. 3-1 Infringement Contentions on September 16, 2024, which map specific structures, features, and methods of each accused product to each limitation of each asserted claim. These Claim Charts provide extensive citations to the accused products' design documentation, published specifications, and the results of the physical teardown analyses performed by Benchmark Semiconductor Analysis, LLC (Lead Engineer: Kevin Ng, 2244 Mission College Boulevard, Santa Clara, California 95054), including the following teardown reports:
• Teardown of the LumiLink 400G-ZR+ (report delivered December 12, 2022)
• Teardown of the LumiLink 800G-DR8 (report delivered June 2023)
• Teardown of the LumiEdge 1600G-LR (report delivered February 2024)
The Benchmark reports confirmed the presence and use of the accused waveguide multiplexer structures, thermal management micro-channels, and polarization-diverse grating couplers in the accused products, each of which corresponds to specific limitations of the asserted claims as detailed in OWS's Claim Charts.
INTERROGATORY NO. 14
Interrogatory: Describe the factual basis for OWS's doctrine of equivalents contentions, including for each claim limitation asserted under the doctrine of equivalents, the function, way, and result of the corresponding element in each Accused Product.
Objections: OWS objects to this interrogatory to the extent it seeks attorney work product or mental impressions regarding OWS's legal theories. OWS further objects to the extent this interrogatory is premature pending the Court's claim construction ruling, which may affect the scope and application of the doctrine of equivalents. OWS additionally objects to the extent this interrogatory is duplicative of OWS's P.R. 3-1 Infringement Contentions, which include doctrine of equivalents contentions.
Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS identifies the following doctrine of equivalents contentions:
'193 Patent, Claims 3 and 7 — "coherent detection module" limitation:
Even if the Court construes the "coherent detection module" limitation in a manner that Lumicore's accused designs do not literally satisfy, OWS contends that the corresponding elements in Lumicore's accused products (the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR) are equivalent to the claimed "coherent detection module" under the function-way-result test:
• Function: The corresponding elements in the accused products perform substantially the same function as the claimed coherent detection module — namely, coherent detection of optical signals to recover both amplitude and phase information.
• Way: The corresponding elements perform this function in substantially the same way — namely, by using integrated photodetectors and digital signal processing circuitry to perform coherent mixing and detection of the received optical signal against a local oscillator reference.
• Result: The corresponding elements achieve substantially the same result — namely, recovery of amplitude, phase, and polarization information from received optical signals, enabling high-capacity data transmission over optical fiber.
'015 Patent, Claim 12 — "two-dimensional sub-wavelength grating" limitation:
Even if the Court construes the "two-dimensional sub-wavelength grating" limitation in a manner that Lumicore's accused designs do not literally satisfy, OWS contends that the corresponding elements in Lumicore's accused products (the LumiLink 800G-DR8 and LumiEdge 1600G-LR) are equivalent to the claimed "two-dimensional sub-wavelength grating" under the function-way-result test:
• Function: The corresponding elements in the accused products perform substantially the same function — namely, coupling light from an optical fiber into a waveguide with polarization diversity.
• Way: The corresponding elements perform this function in substantially the same way — namely, by using a periodic structure with features smaller than the wavelength of light to split incoming polarization states and direct each into a corresponding waveguide path.
• Result: The corresponding elements achieve substantially the same result — namely, efficient coupling of both transverse electric (TE) and transverse magnetic (TM) polarization modes into the photonic integrated circuit.
OWS's full doctrine of equivalents analysis is set forth in its P.R. 3-1 Infringement Contentions and will be further developed and substantiated in the expert report of Dr. Caroline Ashford, due June 15, 2025.
INTERROGATORY NO. 15
Interrogatory: Identify all non-infringing alternatives known to OWS for each of the Accused Products.
Objections: OWS objects to this interrogatory to the extent it improperly seeks to shift to OWS the burden of identifying non-infringing alternatives, which is properly Lumicore's burden in connection with any defense to OWS's lost-profits claim. See BIC Leisure Prods., Inc. v. Windsurfing Int'l, Inc., 1 F.3d 1214, 1218 (Fed. Cir. 1993). OWS further objects to the extent the interrogatory seeks work-product or expert analysis that is properly the subject of expert reports to be served pursuant to Federal Rule of Civil Procedure 26(a)(2).
Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS states that it has analyzed four potential alternative technologies and has concluded that none qualifies as an acceptable non-infringing substitute for the accused products because each alternative lacks one or more key patented features claimed in the asserted patents. The specific alternatives analyzed, the reasons each is inadequate as a non-infringing substitute, and the technical and economic analysis supporting OWS's conclusions will be set forth in the expert reports of Dr. Caroline Ashford (technical analysis of the alternatives) and Dr. Lawrence Keating (damages and market analysis of the alternatives), both due June 15, 2025.
OWS further notes that during her deposition on November 19, 2024, Dr. Sandra Michaud, Lumicore's Chief Technology Officer, could not identify specific non-infringing design alternatives for the accused products when questioned on that subject.
INTERROGATORY NO. 16
Interrogatory: Identify all persons who participated in OWS's decision to file this lawsuit, including the date and circumstances of the decision.
Objections: OWS objects to this interrogatory to the extent it seeks information protected by the attorney-client privilege or the work-product doctrine, including privileged communications and legal advice regarding litigation strategy, the assessment of claims and defenses, and the evaluation of the merits and risks of litigation. OWS will identify the non-privileged participants in the business decision to initiate this litigation, but will not disclose the substance of any privileged communications or legal advice.
Answer: Subject to and without waiving the foregoing objections or the General Objections incorporated herein, OWS identifies the following persons who participated in the business decision to initiate this litigation:
1. Dr. Priya Ramaswamy — Chief Executive Officer, Optiwave Semiconductor Corp.
2. Rebecca Tanaka — General Counsel, Optiwave Semiconductor Corp.
3. Dr. Jian-Wei Huang — Chief Technology Officer, Optiwave Semiconductor Corp.
4. David Leitner — Chief Financial Officer, Optiwave Semiconductor Corp.
5. Franklin Osei — Board Chair, Optiwave Semiconductor Corp.; Managing Partner, Ridgeline Capital Partners, LP, 200 Clarendon Street, 40th Floor, Boston, Massachusetts 02116.
The decision to file this lawsuit was authorized by OWS Board Resolution No. 2024-07. Ridgeline Capital Partners, LP, the majority owner of OWS (holding an approximately 55% equity stake, acquired in 2019 for $780 million), approved the litigation budget of $18.5 million through trial as part of the board authorization. Calderwood & Harkness LLP was formally engaged as lead outside litigation counsel on March 18, 2024, and the Complaint was filed on April 22, 2024 (D.E. 1).
INTERROGATORY NO. 17
Interrogatory: Describe OWS's marking practices for each product that OWS contends practices one or more claims of the Asserted Patents, including the manner, timing, and location of marking.
Objections: OWS objects to this interrogatory to the extent it is premature or seeks detailed marking information beyond that which is required at this stage of the litigatio