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UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

OPTIWAVE SEMICONDUCTOR CORP.,

Plaintiff,

LUMICORE TECHNOLOGIES, INC.,

Defendant.

Case No. 2:24-cv-00319-JRG

Jury Trial Set: February 2, 2026

Hon. James R. Gilstrap

PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S MOTION TO EXCLUDE PORTIONS OF THE EXPERT TESTIMONY OF DR. RAJESH SUNDARAM PURSUANT TO FEDERAL RULE OF EVIDENCE 702 AND *DAUBERT v. MERRELL DOW PHARMACEUTICALS, INC.*, 509 U.S. 579 (1993)

DRAFT — Attorney Work Product / Privileged

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I. INTRODUCTION

Plaintiff Optiwave Semiconductor Corp. ("OWS") respectfully moves the Court to exclude specific portions of the expert report and anticipated trial testimony of Defendant Lumicore Technologies, Inc.'s ("Lumicore") technical and validity expert, Dr. Rajesh Sundaram, Professor of Electrical & Computer Engineering at Pacific Western University, San Diego, California. Dr. Sundaram was retained by Lumicore to offer opinions on non-infringement and invalidity of the four patents-in-suit: U.S. Patent No. 10,234,847 (the "'847 Patent"), U.S. Patent No. 10,891,193 (the "'193 Patent"), U.S. Patent No. 9,678,562 (the "'562 Patent"), and U.S. Patent No. 11,402,015 (the "'015 Patent"). Dr. Sundaram submitted his rebuttal expert report on or about July 15, 2025.

OWS does not seek a blanket exclusion of all of Dr. Sundaram's testimony. Rather, this motion is narrowly targeted at two specific categories of opinions that are unreliable and inadmissible under Federal Rule of Evidence 702 and the gatekeeping standards articulated in Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), and its progeny:

First, Dr. Sundaram's invalidity opinions regarding the '015 Patent, in which he opines that Lumicore conceived of the claimed invention before OWS's priority date. These opinions rest exclusively on Lumicore's own internal design documents purportedly dated 2016–2017, which have never been independently corroborated by any non-interested witness, verified metadata analysis, or contemporaneous documentary evidence from outside Lumicore. The Federal Circuit's corroboration requirement for prior-conception defenses exists precisely to prevent interested parties from manufacturing evidence of prior invention. Dr. Sundaram's wholesale failure to address corroboration — or even acknowledge the legal requirement — renders his prior-conception opinion fundamentally unreliable.

Second, Dr. Sundaram's obviousness opinions regarding the '847 Patent and the '562 Patent, which purport to establish invalidity under 35 U.S.C. § 103 based on combinations of prior-art references. These opinions fail to account for material differences between the cited prior-art references and the claimed inventions, omit any meaningful motivation-to-combine analysis, assume disputed claim constructions without analyzing alternative constructions, and either ignore or summarily dismiss substantial evidence of secondary considerations of non-obviousness — including commercial success, long-felt need, failure of others, and copying. These omissions are not minor gaps to be explored on cross-examination; they are fundamental methodological failures that render Dr. Sundaram's combination analyses unreliable and inadmissible.

Dr. Sundaram's challenged opinions fail to satisfy the requirements of Federal Rule of Evidence 702 and the gatekeeping standards of Daubert and Kumho Tire Co. v. Carmichael, 526 U.S. 137 (1999). They are not based on "sufficient facts or data," they are not "the product of reliable principles and methods," and they do not reflect "a reliable application of the principles and methods to the facts of the case." Fed. R. Evid. 702(b)–(d). The Court should exclude them.

This motion is filed in advance of the jury trial set for February 2, 2026, consistent with the Daubert motions deadline of November 1, 2025, established by the Scheduling Order (D.E. 27, dated August 12, 2024).

II. FACTUAL AND PROCEDURAL BACKGROUND

A. The Asserted Patents

OWS asserts four United States utility patents in this action. Each patent relates to innovations in silicon photonic technology — the field of integrating optical components on silicon substrates to achieve high-bandwidth, low-cost optical communication:

The '847 Patent. U.S. Patent No. 10,234,847, entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss," was filed on September 14, 2016, and issued on March 19, 2019. The '847 Patent was originally assigned to Optiwave Semiconductor Corp. The '847 Patent discloses and claims a novel waveguide multiplexer architecture for silicon photonic platforms that achieves significantly lower insertion loss than prior solutions — a critical performance parameter for high-channel-count wavelength-division multiplexing ("WDM") applications in hyperscale data-center interconnects. The '847 Patent shares a continuation relationship with the '562 Patent.

The '193 Patent. U.S. Patent No. 10,891,193, entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate," was filed on April 7, 2017, and issued on January 12, 2021. The '193 Patent was originally assigned to Optiwave Semiconductor Corp. and claims priority to Provisional Application No. 62/499,117, filed April 7, 2017 — the same provisional application underlying the '015 Patent. The '193 Patent claims a coherent optical transceiver architecture that integrates modulation, detection, and digital signal processing functions on a single silicon substrate, enabling high-bandwidth optical transmission at reduced power consumption and cost.

The '562 Patent. U.S. Patent No. 9,678,562, entitled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks," was filed on November 22, 2014, and issued on June 13, 2017. The '562 Patent was originally assigned to Solara Optics, Inc. and was acquired by OWS pursuant to an Asset Purchase Agreement dated June 15, 2018, for a total consideration of $34.5 million. The '562 Patent claims a method for thermal management of photonic integrated circuits ("PICs") that employs embedded micro-channel heat sinks with specific geometric and fluidic properties to dissipate heat without degrading optical performance. The '562 Patent shares a continuation relationship with the '847 Patent.

The '015 Patent. U.S. Patent No. 11,402,015, entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," was filed on August 30, 2019, and issued on August 2, 2022. The '015 Patent was originally assigned to Optiwave Semiconductor Corp. and claims priority to Provisional Application No. 62/499,117, filed April 7, 2017 — the same provisional application underlying the '193 Patent. The '015 Patent claims a polarization-diverse grating coupler design that efficiently couples light from an optical fiber into a silicon photonic transceiver regardless of the polarization state of the incoming light, overcoming a longstanding challenge in silicon photonic coupling.

All four asserted patents are United States utility patents. All maintenance fees are current. No inter partes review ("IPR") petitions have been filed against any of the asserted patents to date.

B. The Accused Products

OWS accuses three of Lumicore's product lines of infringing the asserted patents:

LumiLink 400G-ZR+. Launched in the third quarter of 2022, the LumiLink 400G-ZR+ is a 400-gigabit coherent optical transceiver module. Lumicore reported fiscal year 2023 revenue of $94.8 million for this product line. OWS accuses the LumiLink 400G-ZR+ of infringing the '847, '193, and '562 Patents.

LumiLink 800G-DR8. Launched in the first quarter of 2023, the LumiLink 800G-DR8 is an 800-gigabit direct-detect optical transceiver module. Lumicore reported fiscal year 2023 revenue of $128.4 million for this product line. OWS accuses the LumiLink 800G-DR8 of infringing all four asserted patents — the '847, '193, '562, and '015 Patents.

LumiEdge 1600G-LR. Launched in the fourth quarter of 2023, the LumiEdge 1600G-LR is a 1.6-terabit long-reach optical transceiver module. Lumicore reported fiscal year 2023 revenue of $41.7 million for this product line. OWS accuses the LumiEdge 1600G-LR of infringing the '193 and '015 Patents.

Total accused-product revenue for Lumicore in fiscal year 2023 was approximately $264.9 million.

C. Lumicore's Invalidity Contentions

Lumicore served its P.R. 3-3 Invalidity Contentions on October 14, 2024 (D.E. 36), identifying a total of 23 prior-art references asserted against the four patents-in-suit. Lumicore's invalidity theories include anticipation under 35 U.S.C. § 102, obviousness under 35 U.S.C. § 103, and — as to the '015 Patent specifically — a prior-conception defense grounded in Lumicore's own internal design documents purportedly created between 2016 and 2017. Lumicore contends that its engineers conceived of the polarization-diverse grating coupler technology claimed in the '015 Patent before OWS's April 7, 2017 priority date, relying on design notebooks, internal technical memoranda, and Northgate Services Inc. presentations generated by the LumiLink design team. These documents were produced in discovery under the Court's three-tier confidentiality order and designated "Highly Confidential — Attorneys' Eyes Only."

D. Dr. Sundaram's Expert Report

Dr. Sundaram submitted his rebuttal expert report on or about July 15, 2025, consistent with the defendant's rebuttal expert reports deadline established by the Scheduling Order (D.E. 27). He was identified as Lumicore's technical and validity expert. Dr. Sundaram holds a Ph.D. in Electrical Engineering from the Massachusetts Institute of Technology and is a tenured Professor of Electrical & Computer Engineering at Pacific Western University in San Diego, California, where he leads the Integrated Photonics Laboratory.

Dr. Sundaram's report spans approximately 347 pages (excluding exhibits) and offers opinions on both non-infringement and invalidity of all four asserted patents. His invalidity opinions include anticipation and obviousness theories for each patent, as well as the prior-conception defense directed at the '015 Patent. OWS challenges only two discrete categories of opinions in this motion: (1) his prior-conception opinion regarding the '015 Patent, and (2) his obviousness opinions regarding the '847 and '562 Patents. OWS does not challenge Dr. Sundaram's non-infringement opinions, his anticipation opinions (except to the extent they overlap with the challenged prior-conception theory), or his invalidity opinions regarding the '193 Patent.

E. Discovery and Deposition Record

The parties have completed fact and expert discovery in this matter. OWS produced approximately 182,000 documents comprising approximately 1.4 million pages. Lumicore produced approximately 147,000 documents comprising approximately 980,000 pages. Document discovery was governed by the Court's three-tier confidentiality order (D.E. 18): Confidential, Highly Confidential — Attorneys' Eyes Only, and Highly Confidential — Source Code.

The following depositions are particularly relevant to this motion:

Dr. Sandra Michaud (Lumicore Chief Technology Officer), deposed November 19, 2024. Dr. Michaud admitted that the LumiLink 400G-ZR+ design team reviewed OWS's published patent application No. 2018/0123456 — which corresponds to the '193 Patent — during the product design phase in 2021–2022. See Ex. 3 (Michaud Dep. Tr.) at 147:8–148:22. She was unable, however, to identify any specific non-infringing design alternatives that the team considered. Id. at 153:4–154:16.

Raymond Bautista (Lumicore General Counsel), deposed December 3, 2024. Mr. Bautista admitted that Lumicore did not commission any formal design-around analysis or freedom-to-operate opinion before launching the LumiEdge 1600G-LR product line in Q4 2023, notwithstanding Lumicore's awareness of the OWS patent portfolio. See Ex. 4 (Bautista Dep. Tr.) at 88:14–90:7.

Melissa Chen (former Lumicore engineer, now employed at Veridian Photonics, Inc.) was subpoenaed on January 22, 2025. See Ex. 10. Ms. Chen was a member of the LumiLink 400G-ZR+ design team during the relevant period (2020–2022). OWS expects Ms. Chen to testify regarding the design team's awareness of OWS patents and published applications, including their review and discussion of OWS's disclosed innovations during the LumiLink product design process.

III. LEGAL STANDARD

A. Federal Rule of Evidence 702

Federal Rule of Evidence 702 governs the admissibility of expert testimony and provides:

A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if the proponent demonstrates to the court that it is more likely than not that:

(a) the expert's scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue;

(b) the testimony is based on sufficient facts or data;

(d) the expert's opinion reflects a reliable application of the principles and methods to the facts of the case.

Fed. R. Evid. 702 (as amended effective December 1, 2023). Under this Rule, the proponent of the expert testimony — here, Lumicore — bears the burden of establishing admissibility by a preponderance of the evidence. See Fed. R. Evid. 702 advisory committee's note to 2023 amendment ("The amendment clarifies that the preponderance standard applies to the three reliability-based requirements added in 2000 — requirements that the testimony be based on sufficient facts or data, that the testimony be the product of reliable principles and methods, and that the expert has reliably applied the principles and methods to the facts of the case."). This burden is not merely a formality; the proponent must affirmatively demonstrate that each of the Rule's requirements is satisfied.

B. *Daubert v. Merrell Dow Pharmaceuticals, Inc.*, 509 U.S. 579 (1993)

In Daubert, the Supreme Court held that the trial court serves as a "gatekeeper" to ensure that expert testimony is both relevant and reliable before it is admitted. 509 U.S. at 589, 597. The Court identified a non-exclusive list of factors that trial courts may consider in assessing the reliability of expert testimony:

(1) whether the theory or technique can be (and has been) tested;

(2) whether the theory or technique has been subjected to peer review and publication;

(3) the known or potential rate of error associated with the technique; and

(4) whether the theory or technique is generally accepted in the relevant scientific community.

Id. at 593–94. These factors are illustrative, not exhaustive, and the trial court retains broad discretion to determine how to assess reliability in a given case. Id. at 594; see also Gen. Elec. Co. v. Joiner, 522 U.S. 136, 142–43 (1997) (trial court's decision to admit or exclude expert testimony is reviewed for abuse of discretion).

The gatekeeping inquiry focuses not on the conclusions the expert reaches, but on the principles and methodology underlying the expert's testimony. Daubert, 509 U.S. at 595. Where "there is simply too great an analytical gap between the data and the opinion proffered," exclusion is warranted. Joiner, 522 U.S. at 146.

C. *Kumho Tire Co. v. Carmichael*, 526 U.S. 137 (1999)

In Kumho Tire, the Supreme Court clarified that the trial court's Daubert gatekeeping obligation extends beyond purely "scientific" testimony to all expert testimony, including testimony based on "technical" or "other specialized" knowledge. 526 U.S. at 141, 147–49. The Court emphasized that the objective of the gatekeeping requirement "is to make certain that an expert, whether basing testimony upon professional studies or personal experience, employs in the courtroom the same level of intellectual rigor that characterizes the practice of an expert in the relevant field." Id. at 152.

D. Fifth Circuit Standards

The Fifth Circuit applies a rigorous Daubert analysis. An expert must demonstrate "a reliable basis in the knowledge and experience of [the relevant] discipline" for his opinions, and there must be "a valid scientific connection to the pertinent inquiry as a precondition to admissibility." Moore v. Ashland Chem., Inc., 151 F.3d 269, 276 (5th Cir. 1998) (en banc) (internal quotation marks omitted). Exclusion is warranted where the expert's "reasoning or methodology is scientifically invalid," where the expert "simply asserts a bottom line opinion," or where the expert fails to account for material facts that undermine his conclusions. See Hathaway v. Bazany, 507 F.3d 312, 318 (5th Cir. 2007); Curtis v. M&S Petroleum, Inc., 174 F.3d 661, 668 (5th Cir. 1999).

The Fifth Circuit has repeatedly held that "[a] claim cannot stand or fall on the mere ipse dixit of a credentialed witness." Viterbo v. Dow Chem. Co., 826 F.2d 420, 422 (5th Cir. 1987). An expert opinion that is "connected to existing data only by the ipse dixit of the expert" provides no basis for the jury to evaluate its reliability. Joiner, 522 U.S. at 146. The court must ensure that the expert testimony "is not only relevant, but reliable." Pipitone v. Biomatrix, Inc., 288 F.3d 239, 244 (5th Cir. 2002).

E. Application to Patent Validity Opinions

The gatekeeping requirements of Rule 702 and Daubert apply with full force to expert testimony on patent validity. In patent cases, expert testimony on invalidity must be grounded in a reliable application of the legal standards for anticipation under 35 U.S.C. § 102 and obviousness under 35 U.S.C. § 103 to the specific prior-art references and patent claims at issue. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1364 (Fed. Cir. 2008); Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1318–19 (Fed. Cir. 2009).

An expert's failure to engage with the actual claim limitations and to identify and address the differences between the prior art and the claimed invention renders the opinion unreliable and excludable. See In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1074 (Fed. Cir. 2012) (affirming exclusion of expert testimony where "the expert failed to apply the proper legal standard"); Brightmoor & Co., Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1331 (Fed. Cir. 2010), vacated on other grounds, 649 F.3d 1276 (Fed. Cir. 2011) (en banc).

For prior-conception defenses, the Federal Circuit requires corroboration of the alleged prior inventor's testimony (or internal documents standing in the place of such testimony). See Price v. Symsek, 988 F.2d 1187, 1194–96 (Fed. Cir. 1993); Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577–78 (Fed. Cir. 1996). Reliance on uncorroborated, self-serving corporate evidence is insufficient as a matter of law to establish prior conception, and expert opinions predicated on such evidence are unreliable and excludable. See Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1350–51 (Fed. Cir. 2001).

IV. ARGUMENT

A. Dr. Sundaram's Prior-Conception Opinions Regarding the '015 Patent Should Be Excluded Because They Rely on Uncorroborated Lumicore Internal Documents

1. Overview of Dr. Sundaram's Prior-Conception Opinion. Dr. Sundaram opines in his expert report that the '015 Patent (U.S. Patent No. 11,402,015, "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers") is invalid because Lumicore conceived of the claimed invention before the '015 Patent's earliest effective priority date. See Ex. 1 (Sundaram Report) at ¶¶ 412–498. The '015 Patent claims priority to Provisional Application No. 62/499,117, filed April 7, 2017. Its non-provisional application was filed on August 30, 2019, and the patent issued on August 2, 2022. Thus, the relevant priority date for purposes of Lumicore's prior-conception defense is April 7, 2017.

To support his opinion, Dr. Sundaram relies exclusively on Lumicore's own internal design documents — specifically, design notebooks, internal technical memoranda, and Northgate Services Inc. presentations — purportedly created between 2016 and 2017 by members of the LumiLink design team. See Ex. 1 (Sundaram Report) at ¶¶ 425–461; Ex. 2 (Lumicore Internal Documents). Dr. Sundaram maps these documents to the asserted claims of the '015 Patent and concludes that Lumicore had conceived of each element of the claimed polarization-diverse grating coupler before April 7, 2017.

Critically, Dr. Sundaram does not rely on, cite, or even reference any independently verifiable evidence to corroborate the dates, authorship, or contents of these internal Lumicore documents. He does not identify any corroborating testimony from non-interested parties. He does not reference any independent metadata analysis. He does not cite any contemporaneous documentary evidence from outside Lumicore. His entire prior-conception opinion rests on Lumicore's self-serving assertion that its own employees created these documents when they say they did.

2. The Legal Requirement of Corroboration. The Federal Circuit has long held that a prior-conception defense requires corroboration. This requirement reflects a deeply rooted concern that interested parties may fabricate or embellish evidence of prior invention to defeat a patent holder's rights. See Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998) ("The law is clear that corroboration of a prior inventor's testimony is required."); Price v. Symsek, 988 F.2d 1187, 1194 (Fed. Cir. 1993) (explaining the corroboration requirement and its purpose).

The Federal Circuit applies a "rule of reason" analysis to evaluate whether the corroborating evidence is sufficient. Under this analysis, courts consider all pertinent evidence — circumstantial and documentary — to determine whether the purported prior inventor's account of the invention is credible. See Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996). However, the rule-of-reason analysis does not dispense with the requirement of corroboration itself; it merely governs the type and quantum of corroborating evidence needed. Internal company documents authored by interested parties — particularly documents created in the ordinary course of a commercial product-development effort — do not satisfy the corroboration requirement when they stand alone, unverified by any independent source. See Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1350–51 (Fed. Cir. 2001); Reese v. Hurst, 661 F.2d 1222, 1225–26 (Fed. Cir. 1981) (predecessor court).

The purpose of the corroboration requirement is straightforward: to prevent fraud and ensure the reliability of claims of prior invention where the alleged prior inventor has a direct financial interest in the litigation's outcome. See Price, 988 F.2d at 1195 ("The corroboration requirement arose out of a concern that inventors who are parties to patent disputes have a strong economic motivation to shade their testimony."). The requirement is particularly important where, as here, the alleged prior inventor is a corporate entity defending itself against a $210 million damages claim and the alleged corroborating evidence consists entirely of documents created by employees of that same corporate entity.

3. Dr. Sundaram's Failure to Address Corroboration. Dr. Sundaram's expert report does not identify any corroborating evidence beyond the Lumicore internal documents themselves. This is not a matter of Dr. Sundaram's analysis being incomplete in some minor respect. His report does not even acknowledge the existence of the corroboration requirement, let alone attempt to satisfy it. See Ex. 1 (Sundaram Report) at ¶¶ 412–498 (entire prior-conception analysis section, containing no discussion of corroboration).

The deficiencies in Dr. Sundaram's corroboration analysis are both numerous and fundamental:

(a) No independent witness testimony. Dr. Sundaram does not reference testimony from any independent, non-Lumicore witness who can corroborate the dates, authorship, or contents of the internal documents. The documents are authored entirely by Lumicore employees, including Dr. Liang Zhao, Kevin Park, and Dr. Priya Ramaswamy — all of whom were members of the LumiLink 400G-ZR+ design team and all of whom remain Lumicore employees. See Ex. 2 (Lumicore Internal Documents). These are interested parties with a direct financial stake in the outcome of this litigation.

(b) No metadata verification. Dr. Sundaram does not address whether the documents' metadata has been independently verified to confirm that the documents were created on the dates claimed, or whether the metadata indicates any subsequent modification, editing, or re-saving after the relevant April 7, 2017 priority date. Given the ease with which digital documents can be created, modified, or backdated, metadata verification by an independent digital forensics expert is a basic element of corroboration that Dr. Sundaram entirely ignores.

(c) No contemporaneous external evidence. Dr. Sundaram does not cite any contemporaneous documentary evidence from outside Lumicore — such as third-party correspondence, conference presentations, publications, disclosures to potential customers or partners, or regulatory filings — that would independently confirm that Lumicore had conceived of the claimed invention before April 7, 2017.

(d) Evidence suggesting the documents were not created independently. Far from corroborating the independence of Lumicore's internal documents, the record evidence affirmatively suggests that Lumicore's design team was aware of and drawing upon OWS's disclosed innovations. Dr. Sandra Michaud, Lumicore's CTO, admitted in her November 19, 2024 deposition that the LumiLink design team reviewed OWS's published patent application No. 2018/0123456 — which corresponds to the '193 Patent and shares the same provisional application (No. 62/499,117) as the '015 Patent — during the product design phase in 2021–2022. See Ex. 3 (Michaud Dep. Tr.) at 147:8–148:22. This admission raises serious questions about whether the purportedly pre-priority-date internal documents were truly generated independently of OWS's disclosed innovations, or whether they were created or modified after the Lumicore team became aware of OWS's work.

Additionally, Melissa Chen — a former Lumicore engineer who was a member of the LumiLink 400G-ZR+ design team during the 2020–2022 timeframe and who now works at Veridian Photonics, Inc. — was subpoenaed by OWS on January 22, 2025. See Ex. 10. OWS expects Ms. Chen to testify regarding the LumiLink design team's awareness of OWS patents and published applications, including the team's review and discussion of OWS's disclosed innovations during the product design process. This anticipated testimony further undermines the claim that Lumicore's internal documents reflect independent prior conception.

Dr. Sundaram's failure to address any of these corroboration concerns is not a matter of weight for the jury to evaluate. It is a fundamental methodological flaw that strikes at the heart of the reliability inquiry under Rule 702 and Daubert.

4. The Unreliability of Dr. Sundaram's Methodology. Dr. Sundaram's prior-conception methodology is unreliable because it treats self-serving, uncorroborated corporate documents as conclusive evidence of prior conception without any independent verification whatsoever. His approach — accepting the face-date and face-content of interested-party documents without further inquiry — is not the methodology of a reliable expert in patent validity analysis. A competent expert addressing a prior-conception defense would, at minimum: (i) acknowledge the legal requirement of corroboration; (ii) identify and evaluate available corroborating evidence; (iii) assess the credibility of the documentary evidence in light of the circumstances of its creation; and (iv) consider whether any evidence undermines the claim of independent prior conception. Dr. Sundaram did none of these things.

His opinion fails to satisfy Rule 702(b)'s requirement that the testimony be "based on sufficient facts or data." The uncorroborated Lumicore internal documents are insufficient as a matter of patent law to establish prior conception. See Sandt Tech., 264 F.3d at 1350–51. Expert opinions that rest on a legally insufficient evidentiary foundation are inadmissible. See Daubert, 509 U.S. at 590 (expert testimony must be grounded in the "methods and procedures of science"); Joiner, 522 U.S. at 146 (exclusion warranted where the analytical gap between the data and the opinion is "too great").

His opinion also fails to satisfy Rule 702(c) and (d). His methodology — uncritical reliance on interested-party documents — is not a "reliable principle[] and method[]" for evaluating prior conception, and his application of that methodology to the facts of this case is not "reliable." The 2023 amendment to Rule 702 reinforces that the proponent must demonstrate by a preponderance that each reliability requirement is met. Lumicore cannot make that showing here.

The risk of prejudice is acute. If Dr. Sundaram is permitted to testify that Lumicore conceived of the claimed invention before OWS's priority date based solely on Lumicore's own uncorroborated documents, the jury will be presented with a veneer of expert authority for a proposition that is legally and factually insufficient. The jury — composed of laypersons unfamiliar with patent law's corroboration requirement — would have no basis to understand that the very evidence underlying Dr. Sundaram's opinion is the type of evidence that the law treats with skepticism. The Court's gatekeeping function exists precisely to prevent such misleading testimony from reaching the jury.

5. OWS's Pending Summary Judgment Motion on This Issue. OWS notes that it is separately pursuing partial summary judgment on the invalidity defense as it relates to the '015 Patent prior-conception theory. OWS's Draft Motion for Partial Summary Judgment on the Validity of the '015 Patent is due September 15, 2025, and argues that Lumicore's prior-conception defense fails as a matter of law because the internal design documents are uncorroborated and, in certain respects, appear to post-date the '015 Patent's priority date.

The Daubert gatekeeping function operates independently of the summary judgment inquiry. Even if the Court does not grant summary judgment — for example, because it concludes that there is a genuine factual dispute as to the documents' dates or contents — the Court is still obligated to ensure that the expert testimony on this topic is reliable. An expert who builds his opinion on an uncorroborated evidentiary foundation has not met his obligation under Rule 702, regardless of whether the underlying factual dispute survives summary judgment. See, e.g., Amorgianos v. Nat'l R.R. Passenger Corp., 303 F.3d 256, 267 (2d Cir. 2002) ("The Daubert inquiry is designed to ensure the reliability and relevancy of expert testimony. It is not a substitute for summary judgment."); Pipitone v. Biomatrix, Inc., 288 F.3d 239, 247 (5th Cir. 2002) (the reliability inquiry is distinct from the sufficiency-of-evidence inquiry).

B. Dr. Sundaram's Obviousness Opinions Regarding the '847 and '562 Patents Should Be Excluded Because He Fails to Account for Material Differences Between the Prior Art and the Claimed Inventions

1. Overview of Dr. Sundaram's Obviousness Opinions. ##### a. The '847 Patent

Dr. Sundaram opines that certain claims of the '847 Patent (U.S. Patent No. 10,234,847, "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss") are invalid as obvious under 35 U.S.C. § 103. See Ex. 1 (Sundaram Report) at ¶¶ 156–287. His obviousness analysis relies on combinations of prior-art references, primarily:

• Takahashi et al., "Dense WDM Silicon Photonic MUX," IEEE Photonics Technology Letters (March 2014) ("Takahashi"), which Dr. Sundaram also cites as an anticipation reference under § 102;

• PCT/EP2015/071234 (Simonsen), filed September 17, 2015 ("Simonsen"), which Dr. Sundaram cites for obviousness in combination with Takahashi.

In total, Lumicore's invalidity contentions identify six prior-art references asserted against the '847 Patent. See Ex. 5 (Lumicore P.R. 3-3 Invalidity Contentions) at 12–47. Dr. Sundaram's obviousness analysis focuses on the Takahashi-Simonsen combination as the primary ground, though he also addresses certain secondary combinations.

##### b. The '562 Patent

Dr. Sundaram opines that certain claims of the '562 Patent (U.S. Patent No. 9,678,562, "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks") are invalid as obvious under § 103. See Ex. 1 (Sundaram Report) at ¶¶ 288–411. His obviousness analysis relies on combinations of prior-art references, primarily:

• U.S. Patent No. 8,412,007 (Bergmann), issued April 2, 2013 ("Bergmann"), cited for obviousness;

• Dr. Li Wei, "Thermal Solutions for PICs," OFC 2013 Conference Paper (March 2013) ("Li Wei"), which Dr. Sundaram also cites as an anticipation reference under § 102.

As noted above, the '562 and '847 Patents are in the same patent family (continuation relationship). The '562 Patent was originally assigned to Solara Optics, Inc. and acquired by OWS pursuant to the Asset Purchase Agreement dated June 15, 2018.

2. Dr. Sundaram's Failure to Account for Differences Between the Prior Art and the Claims. ##### a. The Obviousness Framework

The Supreme Court established the analytical framework for assessing obviousness under 35 U.S.C. § 103 in Graham v. John Deere Co., 383 U.S. 1 (1966), and refined it in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). The Graham analysis requires four inquiries:

(1) Determining the scope and content of the prior art;

(2) Ascertaining the differences between the prior art and the claims at issue;

(3) Resolving the level of ordinary skill in the pertinent art; and

(4) Evaluating any objective indicia of non-obviousness (also known as secondary considerations).

Graham, 383 U.S. at 17–18; KSR, 550 U.S. at 406–07. All four factors are mandatory elements of a complete obviousness analysis. An expert who omits or short-circuits any of them has not reliably applied the legal framework governing his opinion.

Of particular importance here is the second Graham factor: "ascertaining the differences between the prior art and the claims at issue." An obviousness analysis that fails to identify and address the differences between the cited prior-art references and the claimed invention is fundamentally unreliable. The purpose of the Graham inquiry is to determine whether those differences would have been obvious to a person of ordinary skill in the art at the time of the invention. An expert who does not identify the differences cannot logically reach a reliable conclusion about whether they would have been obvious. See In re Cyclobenzaprine, 676 F.3d at 1074; ActiveVideo Networks, Inc. v. Harborview Holdingsmmc'ns, Inc., 694 F.3d 1312, 1327–28 (Fed. Cir. 2012).

Moreover, where the prior art is combined to render the claims obvious, the expert must provide a meaningful motivation-to-combine analysis explaining why a person of ordinary skill in the art would have been motivated to combine the cited references with a reasonable expectation of success. KSR, 550 U.S. at 418 (while the TSM test is not the sole test, the analysis must provide "some articulated reasoning with some rational underpinning"); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

##### b. Specific Failures — The '847 Patent

Dr. Sundaram's obviousness analysis for the '847 Patent suffers from multiple methodological failures that render it unreliable:

(i) Failure to address missing claim limitations. Dr. Sundaram's claim charts map the Takahashi and Simonsen references to the asserted claim limitations of the '847 Patent. See Ex. 1 (Sundaram Report) at ¶¶ 178–263 and Appendices D-1 through D-6. However, his claim charts fail to address specific limitations that are absent from the cited references. Rather than identifying these gaps and explaining why a person of ordinary skill in the art would have found it obvious to bridge them, Dr. Sundaram either ignores the missing limitations entirely or makes conclusory assertions that they are met without supporting analysis. A claim chart that glosses over missing limitations does not satisfy the Graham framework and cannot support a reliable obviousness opinion.

(ii) Failure to account for disputed claim construction. The parties have a significant claim construction dispute regarding the term "waveguide multiplexer" as it appears in the '847 Patent. OWS proposes that "waveguide multiplexer" means "an optical device that combines multiple optical signals of different wavelengths onto a single waveguide." Lumicore proposes a narrower construction limited to "an arrayed waveguide grating that combines optical signals using a slab coupler and phase-shifted waveguide array." See Ex. 8 (Joint Claim Construction Statement, D.E. 40) at 3–5.

Dr. Sundaram's obviousness analysis assumes — without caveat or qualification — that the Court will adopt Lumicore's proposed construction. See Ex. 1 (Sundaram Report) at ¶ 164. He does not analyze whether his obviousness theory holds under OWS's broader construction, or under any intermediate construction the Court may adopt. If the Court construes "waveguide multiplexer" more broadly than Lumicore proposes — as OWS urges — Dr. Sundaram's entire analysis may collapse, because the prior art he cites may not teach or render obvious a "waveguide multiplexer" under a broader construction. An expert opinion that is contingent on a single disputed claim construction, without addressing alternatives, is unreliable. See O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361–62 (Fed. Cir. 2008).

(iii) Failure to address the "low insertion loss" limitation. The '847 Patent's title and claims emphasize "low insertion loss" as a key feature of the claimed waveguide multiplexer. Dr. Sundaram does not analyze whether the combination of Takahashi and Simonsen would achieve the "low insertion loss" performance characteristic claimed in the '847 Patent. See Ex. 1 (Sundaram Report) at ¶¶ 178–263 (no discussion of insertion-loss performance). He does not cite any data, simulation, or analysis demonstrating that combining the teachings of these two references would result in a device meeting the claimed performance parameters. This is not a trivial omission — insertion loss is a critical performance parameter for waveguide multiplexers, and the '847 Patent's contribution to the art was specifically achieving low insertion loss in a multi-channel silicon photonic multiplexer architecture.

(iv) Conclusory motivation-to-combine analysis. Dr. Sundaram does not provide a meaningful motivation-to-combine analysis explaining why a person of ordinary skill in the art would have been motivated to combine Takahashi with Simonsen with a reasonable expectation of success. His report contains only the conclusory statement that "one skilled in the art would find it obvious to combine the teachings of Takahashi and Simonsen to arrive at the claimed invention." See Ex. 1 (Sundaram Report) at ¶ 266. This bare assertion, devoid of any technical reasoning or analysis, is the quintessential ipse dixit that Daubert prohibits. See Joiner, 522 U.S. at 146.

Takahashi describes a dense WDM silicon photonic multiplexer structure published in 2014, while Simonsen is a PCT application filed in 2015 that addresses a different aspect of waveguide design. Dr. Sundaram does not explain what specific teaching in Simonsen a person of ordinary skill would have identified as relevant to the Takahashi architecture, how the teachings would have been integrated, or why a person of ordinary skill would have expected the resulting combination to work — let alone to achieve the "low insertion loss" feature that distinguishes the '847 Patent.

##### c. Specific Failures — The '562 Patent

Dr. Sundaram's obviousness analysis for the '562 Patent is similarly deficient:

(i) Failure to address the "micro-channel heat sink" limitation. The parties dispute the construction of the term "micro-channel heat sink" as used in the '562 Patent. OWS proposes the construction "a heat-dissipating structure containing channels with a hydraulic diameter of less than 1 mm." Lumicore proposes a narrower construction: "a closed-loop liquid-cooling system with channels having a hydraulic diameter between 10 µm and 200 µm." See Ex. 8 (Joint Claim Construction Statement, D.E. 40) at 6–8.

Dr. Sundaram's analysis of the Bergmann patent and the Li Wei conference paper does not explain how the prior art's thermal management structures correspond to the specific micro-channel geometry and configuration claimed in the '562 Patent under either proposed construction. See Ex. 1 (Sundaram Report) at ¶¶ 312–385. The Bergmann patent describes a thermal management approach for electronic circuits generally, and the Li Wei conference paper discusses thermal solutions for PICs at a high level. Neither reference discloses the specific embedded micro-channel heat-sink architecture claimed in the '562 Patent, and Dr. Sundaram does not bridge the gap between the prior art's disclosures and the claims' requirements.

(ii) Failure to address priority-date issues. The '562 Patent was filed on November 22, 2014, and issued on June 13, 2017. The prior-art status of certain references cited by Dr. Sundaram may depend on the effective filing date of the '562 Patent and any swearing-behind evidence that OWS may present. Dr. Sundaram's report does not address these priority-date issues or explain why each reference he relies upon qualifies as prior art under 35 U.S.C. § 102 as of the relevant date. See Ex. 1 (Sundaram Report) at ¶¶ 288–411 (no analysis of prior-art qualification dates). An obviousness opinion that fails to establish that the cited references actually qualify as prior art under the applicable statutory provision is unreliable on its face.

(iii) Conclusory motivation-to-combine analysis. As with his '847 Patent analysis, Dr. Sundaram provides no meaningful explanation of why a person of ordinary skill in the art would have been motivated to combine Bergmann with Li Wei, or how the combination would arrive at the specific claimed invention rather than the prior art's own disclosed solutions. See Ex. 1 (Sundaram Report) at ¶ 388 ("A person of ordinary skill in the art would have been motivated to combine the teachings of Bergmann and Li Wei to arrive at the claimed method."). This bare conclusion provides no analytical framework for the jury to evaluate and constitutes precisely the type of conclusory ipse dixit that Daubert and its progeny require the Court to exclude.

The Bergmann patent addresses thermal management for electronic circuits in general, using cooling architectures that differ significantly from the embedded micro-channel heat sinks claimed in the '562 Patent. The Li Wei conference paper discusses thermal solutions for PICs but does not disclose the specific micro-channel geometry, materials, or integration methods required by the '562 Patent claims. Dr. Sundaram does not explain what specific features of Li Wei would have prompted a person of ordinary skill to modify the Bergmann architecture, how such modifications would have been implemented, or why a person of ordinary skill would have expected the resulting combination to achieve the thermal performance characteristics of the claimed invention.

3. Dr. Sundaram's Failure to Address Secondary Considerations of Non-Obviousness. A complete and reliable obviousness analysis must address the fourth Graham factor: objective indicia of non-obviousness, also known as secondary considerations. These include, but are not limited to: commercial success of products practicing the patented invention; long-felt but unsolved need in the relevant industry; failure of others to achieve the claimed invention; and evidence of copying by the accused infringer. See Graham, 383 U.S. at 17–18; Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349–50 (Fed. Cir. 2012). Secondary considerations are not merely a tiebreaker or an afterthought; they serve as "a guard against slipping into use of hindsight and to resist the temptation to read into the prior art the teachings of the invention in issue." Graham, 383 U.S. at 36.

OWS has identified substantial evidence of secondary considerations in this case:

Commercial success. OWS's fiscal year 2023 revenue was $487.3 million, of which approximately $310 million is attributable to products practicing the asserted patents — specifically, the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families. See Ex. 9 (Secondary Considerations Evidence). The nexus between the commercial success and the patented features is strong: these product lines incorporate the waveguide multiplexer architecture of the '847 Patent, the thermal management methods of the '562 Patent, the coherent transceiver design of the '193 Patent, and the grating coupler design of the '015 Patent as key differentiating features.

Long-felt but unsolved need. There is documented evidence of a long-standing industry need for low-insertion-loss waveguide multiplexing solutions for hyperscale data-center interconnects. Before OWS's innovations, the industry struggled to achieve the combination of high channel count, low insertion loss, and silicon-photonic integration that the '847 Patent claims. Trade publications, conference proceedings, and industry roadmaps from the 2010–2015 period identify this need as a critical bottleneck for next-generation optical interconnect technology.

Failure of others. At least three competitors — including companies with substantial engineering resources — attempted similar silicon photonic multiplexer and thermal management designs before OWS's innovations and failed to achieve comparable performance. OWS has identified these competitors and their failed efforts in its discovery responses and expert materials.

Copying. The record contains compelling evidence of copying by Lumicore. As discussed above, Dr. Sandra Michaud admitted in her November 19, 2024 deposition that the LumiLink 400G-ZR+ design team reviewed OWS's published patent application No. 2018/0123456 during the product design phase in 2021–2022. See Ex. 3 (Michaud Dep. Tr.) at 147:8–148:22. Raymond Bautista admitted that no formal design-around analysis was commissioned before the LumiEdge 1600G-LR launch. See Ex. 4 (Bautista Dep. Tr.) at 88:14–90:7. And Melissa Chen is expected to testify about the LumiLink design team's direct access to and discussion of OWS's published applications. See Ex. 10. This evidence, taken together, strongly supports an inference of copying.

Dr. Sundaram either ignores these secondary considerations entirely or dismisses them in a single conclusory paragraph without analysis. See Ex. 1 (Sundaram Report) at ¶¶ 278–283 (entire discussion of secondary considerations for '847 Patent, consisting of six paragraphs totaling fewer than 200 words, without engagement with OWS's specific evidence); ¶¶ 399–404 (similar treatment for '562 Patent). He does not address OWS's commercial-success evidence, does not analyze the nexus between the patented features and the commercial success of OWS's products, does not discuss the long-felt need in the industry, does not address the documented failure of others, and does not engage with the evidence of Lumicore's copying.

An obviousness opinion that fails to meaningfully address substantial evidence of secondary considerations is unreliable and should be excluded. See Transocean, 699 F.3d at 1349–50 (reversing finding of obviousness where the district court failed to adequately consider secondary considerations); Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1358 (Fed. Cir. 2013) ("Secondary considerations must be considered in every obviousness analysis."); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983) ("Evidence of secondary considerations may often be the most probative and cogent evidence in the record."). Dr. Sundaram's wholesale failure to engage with this evidence is not a minor analytical gap that can be explored on cross-examination; it is a fundamental methodological deficiency that renders his obviousness opinions unreliable.

4. Dr. Sundaram's POSITA Definition Is Unreliable. The third Graham factor requires "resolving the level of ordinary skill in the pertinent art." The definition of a person of ordinary skill in the art ("POSITA") is critical to the obviousness analysis because it sets the baseline against which the differences between the prior art and the claimed invention are evaluated. A POSITA definition that is improperly calibrated — either inflated or deflated — distorts the entire analysis.

OWS's technical expert, Dr. Caroline Ashford, Professor of Electrical Engineering & Photonics at the Northfield Institute of Technology, defines the POSITA for the asserted patents as a person with a Master of Science or Doctor of Philosophy degree in electrical engineering, photonics, or a closely related field, and at least three years of professional experience in the design, fabrication, or testing of silicon-photonic integrated circuits. See Ex. 7 (Ashford Declaration) at ¶¶ 18–23. This definition reflects the actual skill level of engineers working in the silicon photonics field at the relevant time.

Dr. Sundaram's POSITA definition, as set forth in his report, improperly inflates the level of ordinary skill by attributing to the hypothetical POSITA an unrealistically broad base of knowledge spanning multiple distinct sub-disciplines of photonics and semiconductor engineering. See Ex. 1 (Sundaram Report) at ¶¶ 42–48. By inflating the POSITA's knowledge and skill, Dr. Sundaram's analysis effectively attributes to the person of ordinary skill the ability to combine disparate references from different sub-fields with ease — making virtually any combination of references appear obvious. This is a well-recognized methodological flaw. See Innovention Toys, LLC v. MGA Entm't, Inc., 637 F.3d 1314, 1322 (Fed. Cir. 2011) (criticizing an inflated POSITA definition that "essentially swallow[ed] the obviousness analysis"); Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1257 (Fed. Cir. 2007).

Moreover, Dr. Sundaram does not consistently apply his own POSITA definition throughout his analysis. In some portions of his report, he attributes knowledge and capabilities to the POSITA that exceed even his own inflated definition. See, e.g., Ex. 1 (Sundaram Report) at ¶ 235 (assuming the POSITA would "readily understand" a complex multi-step integration process without citing any basis in the prior art or the POSITA's experience). In other portions, he appears to apply a different, lower skill level without explanation. This inconsistency further undermines the reliability of his analysis.

V. THE CHALLENGED OPINIONS WOULD CONFUSE AND MISLEAD THE JURY

If admitted, Dr. Sundaram's unreliable opinions would present the jury with a veneer of scientific authority on issues where the underlying methodology is fundamentally flawed. This risk is not hypothetical or speculative — it is inherent in the nature of expert testimony on complex technical subjects.

With respect to the prior-conception defense for the '015 Patent, the jury would be asked to credit Lumicore's own internal documents as proof that Lumicore conceived of the claimed polarization-diverse grating coupler invention before OWS's priority date. The jury would hear Dr. Sundaram — a credentialed professor of electrical engineering — testify that these documents establish prior conception, without any basis to understand that such documents are legally and factually insufficient in the absence of independent corroboration. The jury has no independent means to evaluate the authenticity, dating, or provenance of Lumicore's internal documents, and Dr. Sundaram's imprimatur would lend false credibility to evidence that does not meet the threshold required by Federal Circuit law.

With respect to the obviousness opinions for the '847 and '562 Patents, the jury would be asked to accept combination analyses that skip over the most critical element of the Graham v. John Deere inquiry: ascertaining the differences between the prior art and the claimed inventions. The jury would hear Dr. Sundaram testify that "one skilled in the art would find it obvious" to combine certain prior-art references, without any meaningful analysis of why such a combination would have been undertaken, how the combination would have been implemented, or whether the resulting device or method would have achieved the claimed invention's specific features and performance characteristics. The jury — composed of laypersons unfamiliar with the intricacies of silicon photonic waveguide design, thermal management of PICs, and polarization-diverse grating coupling — would have no basis to independently evaluate the sufficiency of Dr. Sundaram's combination analysis.

The prejudice to OWS is substantial. OWS seeks approximately $210 million in damages in this case. The validity of the asserted patents is central to liability and damages — if the jury credits Dr. Sundaram's invalidity opinions, OWS may be deprived of its patent rights and its right to compensation for Lumicore's infringement. Unreliable expert opinions on invalidity could improperly sway the jury on this dispositive issue.

The Court's gatekeeping role is especially important in this case because the technology at issue — silicon photonics, waveguide multiplexing, coherent optical transceivers, thermal management of photonic integrated circuits, and polarization-diverse grating couplers — is highly complex and far removed from the everyday experience of jurors. The jury will rely heavily on expert testimony to understand the technical issues and evaluate the competing claims. Allowing unreliable expert testimony to reach the jury would undermine the integrity of the trial process and violate the gatekeeping principles established by Daubert and its progeny.

VI. RELIEF REQUESTED

For the foregoing reasons, Plaintiff Optiwave Semiconductor Corp. respectfully requests that the Court enter an order:

1. Excluding Dr. Rajesh Sundaram's opinions regarding the invalidity of the '015 Patent (U.S. Patent No. 11,402,015) based on Lumicore's prior-conception defense, including all testimony, demonstratives, and exhibits relying on Lumicore's uncorroborated internal design documents dated 2016–2017;

2. Excluding Dr. Rajesh Sundaram's opinions regarding the obviousness of the '847 Patent (U.S. Patent No. 10,234,847) and the '562 Patent (U.S. Patent No. 9,678,562) claims to the extent those opinions: (a) fail to identify and address the differences between the cited prior-art references and the claimed inventions; (b) fail to provide a reliable motivation-to-combine analysis; and (c) fail to meaningfully address secondary considerations of non-obviousness;

3. Precluding Dr. Sundaram from offering any testimony at trial on these excluded topics, including through demonstratives, summaries, or references in other portions of his testimony; and

4. Granting such other and further relief as the Court deems just and proper.

VII. CONCLUSION

Plaintiff Optiwave Semiconductor Corp. has demonstrated that two specific categories of Dr. Rajesh Sundaram's expert opinions fail to meet the reliability requirements of Federal Rule of Evidence 702 and the gatekeeping standards of Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), and Kumho Tire Co. v. Carmichael, 526 U.S. 137 (1999).

First, Dr. Sundaram's prior-conception opinions regarding the '015 Patent are built on an insufficient evidentiary foundation — uncorroborated internal Lumicore design documents authored by interested parties — and fail to address or satisfy the Federal Circuit's corroboration requirement. His wholesale reliance on self-serving corporate documents, without any independent verification, renders his prior-conception opinion fundamentally unreliable.

Second, Dr. Sundaram's obviousness opinions regarding the '847 and '562 Patents fail to apply the governing analytical framework established by Graham v. John Deere Co. and KSR International Co. v. Teleflex Inc. He does not identify or address the differences between the cited prior-art references and the claimed inventions. He does not provide a meaningful motivation-to-combine analysis. He does not account for disputed claim constructions. And he either ignores or summarily dismisses substantial evidence of secondary considerations of non-obviousness, including commercial success, long-felt need, failure of others, and copying.

These are not minor analytical gaps that go to the weight of the evidence. They are fundamental methodological failures that go to the admissibility of the evidence. The reliability requirements of Rule 702 and Daubert demand that expert testimony offered to the jury be grounded in sufficient facts and data, employ reliable principles and methods, and reflect a reliable application of those principles and methods to the facts of the case. Dr. Sundaram's challenged opinions fail each of these requirements.

OWS respectfully urges the Court to exercise its gatekeeping function and exclude the identified portions of Dr. Sundaram's expert testimony.

Respectfully submitted,

November 1, 2025

CALDERWOOD & HARKNESS LLP

By: ________

Alan Ngo (CA Bar No. 287541; admitted pro hac vice E.D. Tex.) 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 486-5000 Facsimile: (213) 486-5001

Email: alan.ngo@calderwoodharkness.com

Marcus Delgado (TX Bar No. 24098712; CA Bar No. 301456) Wendy Schultz (CA Bar No. 294817; admitted pro hac vice E.D. Tex.) Omar Siddiqui (CA Bar No. 308923; admitted pro hac vice E.D. Tex.)

WHITMORE & CALLAHAN LLP

James "Jim" Callahan (TX Bar No. 03876210) 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 597-6200 Facsimile: (903) 597-6201

Email: jcallahan@whitmorecallahan.com

Attorneys for Plaintiff Optiwave Semiconductor Corp.

CERTIFICATE OF SERVICE

I hereby certify that on November 1, 2025, the foregoing Plaintiff Optiwave Semiconductor Corp.'s Motion to Exclude Portions of the Expert Testimony of Dr. Rajesh Sundaram Pursuant to Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), together with all exhibits and attachments thereto, was served on all counsel of record via the Court's CM/ECF electronic filing system, which will send notification of such filing to the following:

Catherine "Kate" Rourke Darren Cho Samantha Briggs Rohan Iyer HAWTHORNE VEGA & CRUZ LLP 600 Congress Avenue, Suite 2400 Austin, Texas 78701

Maria Garza TRASK EDDINGTON LLP 425 East Front Street, Suite 300 Tyler, Texas 75701

Attorneys for Defendant Lumicore Technologies, Inc.

By: ________

Alan Ngo

CERTIFICATE OF CONFERENCE

Pursuant to Local Rule CV-7(h) for the Eastern District of Texas, I hereby certify that counsel for Plaintiff Optiwave Semiconductor Corp. conferred with counsel for Defendant Lumicore Technologies, Inc. regarding the relief sought in this motion. Specifically, on October 21, 2025, Wendy Schultz of Calderwood & Harkness LLP conferred by telephone with Samantha Briggs of Hawthorne Vega & Cruz LLP regarding Plaintiff's intention to file this motion and the specific relief requested herein. Counsel for Lumicore stated that Lumicore opposes the requested relief and that the parties were unable

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
OPTIWAVE SEMICONDUCTOR CORP.,
Plaintiff,
v.
LUMICORE TECHNOLOGIES, INC.,
Defendant.
Case No. 2:24-cv-00319-JRG
Jury Trial Set: February 2, 2026
Hon. James R. Gilstrap
PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S MOTION TO EXCLUDE PORTIONS OF THE EXPERT TESTIMONY OF DR. RAJESH SUNDARAM PURSUANT TO FEDERAL RULE OF EVIDENCE 702 AND *DAUBERT v. MERRELL DOW PHARMACEUTICALS, INC.*, 509 U.S. 579 (1993)
DRAFT — Attorney Work Product / Privileged
Right-click to update Table of Contents
I. INTRODUCTION
Plaintiff Optiwave Semiconductor Corp. ("OWS") respectfully moves the Court to exclude specific portions of the expert report and anticipated trial testimony of Defendant Lumicore Technologies, Inc.'s ("Lumicore") technical and validity expert, Dr. Rajesh Sundaram, Professor of Electrical & Computer Engineering at Pacific Western University, San Diego, California. Dr. Sundaram was retained by Lumicore to offer opinions on non-infringement and invalidity of the four patents-in-suit: U.S. Patent No. 10,234,847 (the "'847 Patent"), U.S. Patent No. 10,891,193 (the "'193 Patent"), U.S. Patent No. 9,678,562 (the "'562 Patent"), and U.S. Patent No. 11,402,015 (the "'015 Patent"). Dr. Sundaram submitted his rebuttal expert report on or about July 15, 2025.
OWS does not seek a blanket exclusion of all of Dr. Sundaram's testimony. Rather, this motion is narrowly targeted at two specific categories of opinions that are unreliable and inadmissible under Federal Rule of Evidence 702 and the gatekeeping standards articulated in Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), and its progeny:
First, Dr. Sundaram's invalidity opinions regarding the '015 Patent, in which he opines that Lumicore conceived of the claimed invention before OWS's priority date. These opinions rest exclusively on Lumicore's own internal design documents purportedly dated 2016–2017, which have never been independently corroborated by any non-interested witness, verified metadata analysis, or contemporaneous documentary evidence from outside Lumicore. The Federal Circuit's corroboration requirement for prior-conception defenses exists precisely to prevent interested parties from manufacturing evidence of prior invention. Dr. Sundaram's wholesale failure to address corroboration — or even acknowledge the legal requirement — renders his prior-conception opinion fundamentally unreliable.
Second, Dr. Sundaram's obviousness opinions regarding the '847 Patent and the '562 Patent, which purport to establish invalidity under 35 U.S.C. § 103 based on combinations of prior-art references. These opinions fail to account for material differences between the cited prior-art references and the claimed inventions, omit any meaningful motivation-to-combine analysis, assume disputed claim constructions without analyzing alternative constructions, and either ignore or summarily dismiss substantial evidence of secondary considerations of non-obviousness — including commercial success, long-felt need, failure of others, and copying. These omissions are not minor gaps to be explored on cross-examination; they are fundamental methodological failures that render Dr. Sundaram's combination analyses unreliable and inadmissible.
Dr. Sundaram's challenged opinions fail to satisfy the requirements of Federal Rule of Evidence 702 and the gatekeeping standards of Daubert and Kumho Tire Co. v. Carmichael, 526 U.S. 137 (1999). They are not based on "sufficient facts or data," they are not "the product of reliable principles and methods," and they do not reflect "a reliable application of the principles and methods to the facts of the case." Fed. R. Evid. 702(b)–(d). The Court should exclude them.
This motion is filed in advance of the jury trial set for February 2, 2026, consistent with the Daubert motions deadline of November 1, 2025, established by the Scheduling Order (D.E. 27, dated August 12, 2024).
II. FACTUAL AND PROCEDURAL BACKGROUND
A. The Asserted Patents
OWS asserts four United States utility patents in this action. Each patent relates to innovations in silicon photonic technology — the field of integrating optical components on silicon substrates to achieve high-bandwidth, low-cost optical communication:
The '847 Patent. U.S. Patent No. 10,234,847, entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss," was filed on September 14, 2016, and issued on March 19, 2019. The '847 Patent was originally assigned to Optiwave Semiconductor Corp. The '847 Patent discloses and claims a novel waveguide multiplexer architecture for silicon photonic platforms that achieves significantly lower insertion loss than prior solutions — a critical performance parameter for high-channel-count wavelength-division multiplexing ("WDM") applications in hyperscale data-center interconnects. The '847 Patent shares a continuation relationship with the '562 Patent.
The '193 Patent. U.S. Patent No. 10,891,193, entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate," was filed on April 7, 2017, and issued on January 12, 2021. The '193 Patent was originally assigned to Optiwave Semiconductor Corp. and claims priority to Provisional Application No. 62/499,117, filed April 7, 2017 — the same provisional application underlying the '015 Patent. The '193 Patent claims a coherent optical transceiver architecture that integrates modulation, detection, and digital signal processing functions on a single silicon substrate, enabling high-bandwidth optical transmission at reduced power consumption and cost.
The '562 Patent. U.S. Patent No. 9,678,562, entitled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks," was filed on November 22, 2014, and issued on June 13, 2017. The '562 Patent was originally assigned to Solara Optics, Inc. and was acquired by OWS pursuant to an Asset Purchase Agreement dated June 15, 2018, for a total consideration of $34.5 million. The '562 Patent claims a method for thermal management of photonic integrated circuits ("PICs") that employs embedded micro-channel heat sinks with specific geometric and fluidic properties to dissipate heat without degrading optical performance. The '562 Patent shares a continuation relationship with the '847 Patent.
The '015 Patent. U.S. Patent No. 11,402,015, entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," was filed on August 30, 2019, and issued on August 2, 2022. The '015 Patent was originally assigned to Optiwave Semiconductor Corp. and claims priority to Provisional Application No. 62/499,117, filed April 7, 2017 — the same provisional application underlying the '193 Patent. The '015 Patent claims a polarization-diverse grating coupler design that efficiently couples light from an optical fiber into a silicon photonic transceiver regardless of the polarization state of the incoming light, overcoming a longstanding challenge in silicon photonic coupling.
All four asserted patents are United States utility patents. All maintenance fees are current. No inter partes review ("IPR") petitions have been filed against any of the asserted patents to date.
B. The Accused Products
OWS accuses three of Lumicore's product lines of infringing the asserted patents:
LumiLink 400G-ZR+. Launched in the third quarter of 2022, the LumiLink 400G-ZR+ is a 400-gigabit coherent optical transceiver module. Lumicore reported fiscal year 2023 revenue of $94.8 million for this product line. OWS accuses the LumiLink 400G-ZR+ of infringing the '847, '193, and '562 Patents.
LumiLink 800G-DR8. Launched in the first quarter of 2023, the LumiLink 800G-DR8 is an 800-gigabit direct-detect optical transceiver module. Lumicore reported fiscal year 2023 revenue of $128.4 million for this product line. OWS accuses the LumiLink 800G-DR8 of infringing all four asserted patents — the '847, '193, '562, and '015 Patents.
LumiEdge 1600G-LR. Launched in the fourth quarter of 2023, the LumiEdge 1600G-LR is a 1.6-terabit long-reach optical transceiver module. Lumicore reported fiscal year 2023 revenue of $41.7 million for this product line. OWS accuses the LumiEdge 1600G-LR of infringing the '193 and '015 Patents.
Total accused-product revenue for Lumicore in fiscal year 2023 was approximately $264.9 million.
C. Lumicore's Invalidity Contentions
Lumicore served its P.R. 3-3 Invalidity Contentions on October 14, 2024 (D.E. 36), identifying a total of 23 prior-art references asserted against the four patents-in-suit. Lumicore's invalidity theories include anticipation under 35 U.S.C. § 102, obviousness under 35 U.S.C. § 103, and — as to the '015 Patent specifically — a prior-conception defense grounded in Lumicore's own internal design documents purportedly created between 2016 and 2017. Lumicore contends that its engineers conceived of the polarization-diverse grating coupler technology claimed in the '015 Patent before OWS's April 7, 2017 priority date, relying on design notebooks, internal technical memoranda, and Northgate Services Inc. presentations generated by the LumiLink design team. These documents were produced in discovery under the Court's three-tier confidentiality order and designated "Highly Confidential — Attorneys' Eyes Only."
D. Dr. Sundaram's Expert Report
Dr. Sundaram submitted his rebuttal expert report on or about July 15, 2025, consistent with the defendant's rebuttal expert reports deadline established by the Scheduling Order (D.E. 27). He was identified as Lumicore's technical and validity expert. Dr. Sundaram holds a Ph.D. in Electrical Engineering from the Massachusetts Institute of Technology and is a tenured Professor of Electrical & Computer Engineering at Pacific Western University in San Diego, California, where he leads the Integrated Photonics Laboratory.
Dr. Sundaram's report spans approximately 347 pages (excluding exhibits) and offers opinions on both non-infringement and invalidity of all four asserted patents. His invalidity opinions include anticipation and obviousness theories for each patent, as well as the prior-conception defense directed at the '015 Patent. OWS challenges only two discrete categories of opinions in this motion: (1) his prior-conception opinion regarding the '015 Patent, and (2) his obviousness opinions regarding the '847 and '562 Patents. OWS does not challenge Dr. Sundaram's non-infringement opinions, his anticipation opinions (except to the extent they overlap with the challenged prior-conception theory), or his invalidity opinions regarding the '193 Patent.
E. Discovery and Deposition Record
The parties have completed fact and expert discovery in this matter. OWS produced approximately 182,000 documents comprising approximately 1.4 million pages. Lumicore produced approximately 147,000 documents comprising approximately 980,000 pages. Document discovery was governed by the Court's three-tier confidentiality order (D.E. 18): Confidential, Highly Confidential — Attorneys' Eyes Only, and Highly Confidential — Source Code.
The following depositions are particularly relevant to this motion:
Dr. Sandra Michaud (Lumicore Chief Technology Officer), deposed November 19, 2024. Dr. Michaud admitted that the LumiLink 400G-ZR+ design team reviewed OWS's published patent application No. 2018/0123456 — which corresponds to the '193 Patent — during the product design phase in 2021–2022. See Ex. 3 (Michaud Dep. Tr.) at 147:8–148:22. She was unable, however, to identify any specific non-infringing design alternatives that the team considered. Id. at 153:4–154:16.
Raymond Bautista (Lumicore General Counsel), deposed December 3, 2024. Mr. Bautista admitted that Lumicore did not commission any formal design-around analysis or freedom-to-operate opinion before launching the LumiEdge 1600G-LR product line in Q4 2023, notwithstanding Lumicore's awareness of the OWS patent portfolio. See Ex. 4 (Bautista Dep. Tr.) at 88:14–90:7.
Melissa Chen (former Lumicore engineer, now employed at Veridian Photonics, Inc.) was subpoenaed on January 22, 2025. See Ex. 10. Ms. Chen was a member of the LumiLink 400G-ZR+ design team during the relevant period (2020–2022). OWS expects Ms. Chen to testify regarding the design team's awareness of OWS patents and published applications, including their review and discussion of OWS's disclosed innovations during the LumiLink product design process.
III. LEGAL STANDARD
A. Federal Rule of Evidence 702
Federal Rule of Evidence 702 governs the admissibility of expert testimony and provides:
A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if the proponent demonstrates to the court that it is more likely than not that:
(a) the expert's scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue;
(b) the testimony is based on sufficient facts or data;
(c) the testimony is the product of reliable principles and methods; and
(d) the expert's opinion reflects a reliable application of the principles and methods to the facts of the case.
Fed. R. Evid. 702 (as amended effective December 1, 2023). Under this Rule, the proponent of the expert testimony — here, Lumicore — bears the burden of establishing admissibility by a preponderance of the evidence. See Fed. R. Evid. 702 advisory committee's note to 2023 amendment ("The amendment clarifies that the preponderance standard applies to the three reliability-based requirements added in 2000 — requirements that the testimony be based on sufficient facts or data, that the testimony be the product of reliable principles and methods, and that the expert has reliably applied the principles and methods to the facts of the case."). This burden is not merely a formality; the proponent must affirmatively demonstrate that each of the Rule's requirements is satisfied.
B. *Daubert v. Merrell Dow Pharmaceuticals, Inc.*, 509 U.S. 579 (1993)
In Daubert, the Supreme Court held that the trial court serves as a "gatekeeper" to ensure that expert testimony is both relevant and reliable before it is admitted. 509 U.S. at 589, 597. The Court identified a non-exclusive list of factors that trial courts may consider in assessing the reliability of expert testimony:
(1) whether the theory or technique can be (and has been) tested;
(2) whether the theory or technique has been subjected to peer review and publication;
(3) the known or potential rate of error associated with the technique; and
(4) whether the theory or technique is generally accepted in the relevant scientific community.
Id. at 593–94. These factors are illustrative, not exhaustive, and the trial court retains broad discretion to determine how to assess reliability in a given case. Id. at 594; see also Gen. Elec. Co. v. Joiner, 522 U.S. 136, 142–43 (1997) (trial court's decision to admit or exclude expert testimony is reviewed for abuse of discretion).
The gatekeeping inquiry focuses not on the conclusions the expert reaches, but on the principles and methodology underlying the expert's testimony. Daubert, 509 U.S. at 595. Where "there is simply too great an analytical gap between the data and the opinion proffered," exclusion is warranted. Joiner, 522 U.S. at 146.
C. *Kumho Tire Co. v. Carmichael*, 526 U.S. 137 (1999)
In Kumho Tire, the Supreme Court clarified that the trial court's Daubert gatekeeping obligation extends beyond purely "scientific" testimony to all expert testimony, including testimony based on "technical" or "other specialized" knowledge. 526 U.S. at 141, 147–49. The Court emphasized that the objective of the gatekeeping requirement "is to make certain that an expert, whether basing testimony upon professional studies or personal experience, employs in the courtroom the same level of intellectual rigor that characterizes the practice of an expert in the relevant field." Id. at 152.
D. Fifth Circuit Standards
The Fifth Circuit applies a rigorous Daubert analysis. An expert must demonstrate "a reliable basis in the knowledge and experience of [the relevant] discipline" for his opinions, and there must be "a valid scientific connection to the pertinent inquiry as a precondition to admissibility." Moore v. Ashland Chem., Inc., 151 F.3d 269, 276 (5th Cir. 1998) (en banc) (internal quotation marks omitted). Exclusion is warranted where the expert's "reasoning or methodology is scientifically invalid," where the expert "simply asserts a bottom line opinion," or where the expert fails to account for material facts that undermine his conclusions. See Hathaway v. Bazany, 507 F.3d 312, 318 (5th Cir. 2007); Curtis v. M&S Petroleum, Inc., 174 F.3d 661, 668 (5th Cir. 1999).
The Fifth Circuit has repeatedly held that "[a] claim cannot stand or fall on the mere ipse dixit of a credentialed witness." Viterbo v. Dow Chem. Co., 826 F.2d 420, 422 (5th Cir. 1987). An expert opinion that is "connected to existing data only by the ipse dixit of the expert" provides no basis for the jury to evaluate its reliability. Joiner, 522 U.S. at 146. The court must ensure that the expert testimony "is not only relevant, but reliable." Pipitone v. Biomatrix, Inc., 288 F.3d 239, 244 (5th Cir. 2002).
E. Application to Patent Validity Opinions
The gatekeeping requirements of Rule 702 and Daubert apply with full force to expert testimony on patent validity. In patent cases, expert testimony on invalidity must be grounded in a reliable application of the legal standards for anticipation under 35 U.S.C. § 102 and obviousness under 35 U.S.C. § 103 to the specific prior-art references and patent claims at issue. See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1364 (Fed. Cir. 2008); Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1318–19 (Fed. Cir. 2009).
An expert's failure to engage with the actual claim limitations and to identify and address the differences between the prior art and the claimed invention renders the opinion unreliable and excludable. See In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1074 (Fed. Cir. 2012) (affirming exclusion of expert testimony where "the expert failed to apply the proper legal standard"); Brightmoor & Co., Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1331 (Fed. Cir. 2010), vacated on other grounds, 649 F.3d 1276 (Fed. Cir. 2011) (en banc).
For prior-conception defenses, the Federal Circuit requires corroboration of the alleged prior inventor's testimony (or internal documents standing in the place of such testimony). See Price v. Symsek, 988 F.2d 1187, 1194–96 (Fed. Cir. 1993); Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577–78 (Fed. Cir. 1996). Reliance on uncorroborated, self-serving corporate evidence is insufficient as a matter of law to establish prior conception, and expert opinions predicated on such evidence are unreliable and excludable. See Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1350–51 (Fed. Cir. 2001).
IV. ARGUMENT
A. Dr. Sundaram's Prior-Conception Opinions Regarding the '015 Patent Should Be Excluded Because They Rely on Uncorroborated Lumicore Internal Documents
1. Overview of Dr. Sundaram's Prior-Conception Opinion. Dr. Sundaram opines in his expert report that the '015 Patent (U.S. Patent No. 11,402,015, "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers") is invalid because Lumicore conceived of the claimed invention before the '015 Patent's earliest effective priority date. See Ex. 1 (Sundaram Report) at ¶¶ 412–498. The '015 Patent claims priority to Provisional Application No. 62/499,117, filed April 7, 2017. Its non-provisional application was filed on August 30, 2019, and the patent issued on August 2, 2022. Thus, the relevant priority date for purposes of Lumicore's prior-conception defense is April 7, 2017.
To support his opinion, Dr. Sundaram relies exclusively on Lumicore's own internal design documents — specifically, design notebooks, internal technical memoranda, and Northgate Services Inc. presentations — purportedly created between 2016 and 2017 by members of the LumiLink design team. See Ex. 1 (Sundaram Report) at ¶¶ 425–461; Ex. 2 (Lumicore Internal Documents). Dr. Sundaram maps these documents to the asserted claims of the '015 Patent and concludes that Lumicore had conceived of each element of the claimed polarization-diverse grating coupler before April 7, 2017.
Critically, Dr. Sundaram does not rely on, cite, or even reference any independently verifiable evidence to corroborate the dates, authorship, or contents of these internal Lumicore documents. He does not identify any corroborating testimony from non-interested parties. He does not reference any independent metadata analysis. He does not cite any contemporaneous documentary evidence from outside Lumicore. His entire prior-conception opinion rests on Lumicore's self-serving assertion that its own employees created these documents when they say they did.
2. The Legal Requirement of Corroboration. The Federal Circuit has long held that a prior-conception defense requires corroboration. This requirement reflects a deeply rooted concern that interested parties may fabricate or embellish evidence of prior invention to defeat a patent holder's rights. See Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998) ("The law is clear that corroboration of a prior inventor's testimony is required."); Price v. Symsek, 988 F.2d 1187, 1194 (Fed. Cir. 1993) (explaining the corroboration requirement and its purpose).
The Federal Circuit applies a "rule of reason" analysis to evaluate whether the corroborating evidence is sufficient. Under this analysis, courts consider all pertinent evidence — circumstantial and documentary — to determine whether the purported prior inventor's account of the invention is credible. See Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996). However, the rule-of-reason analysis does not dispense with the requirement of corroboration itself; it merely governs the type and quantum of corroborating evidence needed. Internal company documents authored by interested parties — particularly documents created in the ordinary course of a commercial product-development effort — do not satisfy the corroboration requirement when they stand alone, unverified by any independent source. See Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1350–51 (Fed. Cir. 2001); Reese v. Hurst, 661 F.2d 1222, 1225–26 (Fed. Cir. 1981) (predecessor court).
The purpose of the corroboration requirement is straightforward: to prevent fraud and ensure the reliability of claims of prior invention where the alleged prior inventor has a direct financial interest in the litigation's outcome. See Price, 988 F.2d at 1195 ("The corroboration requirement arose out of a concern that inventors who are parties to patent disputes have a strong economic motivation to shade their testimony."). The requirement is particularly important where, as here, the alleged prior inventor is a corporate entity defending itself against a $210 million damages claim and the alleged corroborating evidence consists entirely of documents created by employees of that same corporate entity.
3. Dr. Sundaram's Failure to Address Corroboration. Dr. Sundaram's expert report does not identify any corroborating evidence beyond the Lumicore internal documents themselves. This is not a matter of Dr. Sundaram's analysis being incomplete in some minor respect. His report does not even acknowledge the existence of the corroboration requirement, let alone attempt to satisfy it. See Ex. 1 (Sundaram Report) at ¶¶ 412–498 (entire prior-conception analysis section, containing no discussion of corroboration).
The deficiencies in Dr. Sundaram's corroboration analysis are both numerous and fundamental:
(a) No independent witness testimony. Dr. Sundaram does not reference testimony from any independent, non-Lumicore witness who can corroborate the dates, authorship, or contents of the internal documents. The documents are authored entirely by Lumicore employees, including Dr. Liang Zhao, Kevin Park, and Dr. Priya Ramaswamy — all of whom were members of the LumiLink 400G-ZR+ design team and all of whom remain Lumicore employees. See Ex. 2 (Lumicore Internal Documents). These are interested parties with a direct financial stake in the outcome of this litigation.
(b) No metadata verification. Dr. Sundaram does not address whether the documents' metadata has been independently verified to confirm that the documents were created on the dates claimed, or whether the metadata indicates any subsequent modification, editing, or re-saving after the relevant April 7, 2017 priority date. Given the ease with which digital documents can be created, modified, or backdated, metadata verification by an independent digital forensics expert is a basic element of corroboration that Dr. Sundaram entirely ignores.
(c) No contemporaneous external evidence. Dr. Sundaram does not cite any contemporaneous documentary evidence from outside Lumicore — such as third-party correspondence, conference presentations, publications, disclosures to potential customers or partners, or regulatory filings — that would independently confirm that Lumicore had conceived of the claimed invention before April 7, 2017.
(d) Evidence suggesting the documents were not created independently. Far from corroborating the independence of Lumicore's internal documents, the record evidence affirmatively suggests that Lumicore's design team was aware of and drawing upon OWS's disclosed innovations. Dr. Sandra Michaud, Lumicore's CTO, admitted in her November 19, 2024 deposition that the LumiLink design team reviewed OWS's published patent application No. 2018/0123456 — which corresponds to the '193 Patent and shares the same provisional application (No. 62/499,117) as the '015 Patent — during the product design phase in 2021–2022. See Ex. 3 (Michaud Dep. Tr.) at 147:8–148:22. This admission raises serious questions about whether the purportedly pre-priority-date internal documents were truly generated independently of OWS's disclosed innovations, or whether they were created or modified after the Lumicore team became aware of OWS's work.
Additionally, Melissa Chen — a former Lumicore engineer who was a member of the LumiLink 400G-ZR+ design team during the 2020–2022 timeframe and who now works at Veridian Photonics, Inc. — was subpoenaed by OWS on January 22, 2025. See Ex. 10. OWS expects Ms. Chen to testify regarding the LumiLink design team's awareness of OWS patents and published applications, including the team's review and discussion of OWS's disclosed innovations during the product design process. This anticipated testimony further undermines the claim that Lumicore's internal documents reflect independent prior conception.
Dr. Sundaram's failure to address any of these corroboration concerns is not a matter of weight for the jury to evaluate. It is a fundamental methodological flaw that strikes at the heart of the reliability inquiry under Rule 702 and Daubert.
4. The Unreliability of Dr. Sundaram's Methodology. Dr. Sundaram's prior-conception methodology is unreliable because it treats self-serving, uncorroborated corporate documents as conclusive evidence of prior conception without any independent verification whatsoever. His approach — accepting the face-date and face-content of interested-party documents without further inquiry — is not the methodology of a reliable expert in patent validity analysis. A competent expert addressing a prior-conception defense would, at minimum: (i) acknowledge the legal requirement of corroboration; (ii) identify and evaluate available corroborating evidence; (iii) assess the credibility of the documentary evidence in light of the circumstances of its creation; and (iv) consider whether any evidence undermines the claim of independent prior conception. Dr. Sundaram did none of these things.
His opinion fails to satisfy Rule 702(b)'s requirement that the testimony be "based on sufficient facts or data." The uncorroborated Lumicore internal documents are insufficient as a matter of patent law to establish prior conception. See Sandt Tech., 264 F.3d at 1350–51. Expert opinions that rest on a legally insufficient evidentiary foundation are inadmissible. See Daubert, 509 U.S. at 590 (expert testimony must be grounded in the "methods and procedures of science"); Joiner, 522 U.S. at 146 (exclusion warranted where the analytical gap between the data and the opinion is "too great").
His opinion also fails to satisfy Rule 702(c) and (d). His methodology — uncritical reliance on interested-party documents — is not a "reliable principle[] and method[]" for evaluating prior conception, and his application of that methodology to the facts of this case is not "reliable." The 2023 amendment to Rule 702 reinforces that the proponent must demonstrate by a preponderance that each reliability requirement is met. Lumicore cannot make that showing here.
The risk of prejudice is acute. If Dr. Sundaram is permitted to testify that Lumicore conceived of the claimed invention before OWS's priority date based solely on Lumicore's own uncorroborated documents, the jury will be presented with a veneer of expert authority for a proposition that is legally and factually insufficient. The jury — composed of laypersons unfamiliar with patent law's corroboration requirement — would have no basis to understand that the very evidence underlying Dr. Sundaram's opinion is the type of evidence that the law treats with skepticism. The Court's gatekeeping function exists precisely to prevent such misleading testimony from reaching the jury.
5. OWS's Pending Summary Judgment Motion on This Issue. OWS notes that it is separately pursuing partial summary judgment on the invalidity defense as it relates to the '015 Patent prior-conception theory. OWS's Draft Motion for Partial Summary Judgment on the Validity of the '015 Patent is due September 15, 2025, and argues that Lumicore's prior-conception defense fails as a matter of law because the internal design documents are uncorroborated and, in certain respects, appear to post-date the '015 Patent's priority date.
The Daubert gatekeeping function operates independently of the summary judgment inquiry. Even if the Court does not grant summary judgment — for example, because it concludes that there is a genuine factual dispute as to the documents' dates or contents — the Court is still obligated to ensure that the expert testimony on this topic is reliable. An expert who builds his opinion on an uncorroborated evidentiary foundation has not met his obligation under Rule 702, regardless of whether the underlying factual dispute survives summary judgment. See, e.g., Amorgianos v. Nat'l R.R. Passenger Corp., 303 F.3d 256, 267 (2d Cir. 2002) ("The Daubert inquiry is designed to ensure the reliability and relevancy of expert testimony. It is not a substitute for summary judgment."); Pipitone v. Biomatrix, Inc., 288 F.3d 239, 247 (5th Cir. 2002) (the reliability inquiry is distinct from the sufficiency-of-evidence inquiry).
B. Dr. Sundaram's Obviousness Opinions Regarding the '847 and '562 Patents Should Be Excluded Because He Fails to Account for Material Differences Between the Prior Art and the Claimed Inventions
1. Overview of Dr. Sundaram's Obviousness Opinions. ##### a. The '847 Patent
Dr. Sundaram opines that certain claims of the '847 Patent (U.S. Patent No. 10,234,847, "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss") are invalid as obvious under 35 U.S.C. § 103. See Ex. 1 (Sundaram Report) at ¶¶ 156–287. His obviousness analysis relies on combinations of prior-art references, primarily:
• Takahashi et al., "Dense WDM Silicon Photonic MUX," IEEE Photonics Technology Letters (March 2014) ("Takahashi"), which Dr. Sundaram also cites as an anticipation reference under § 102;
• PCT/EP2015/071234 (Simonsen), filed September 17, 2015 ("Simonsen"), which Dr. Sundaram cites for obviousness in combination with Takahashi.
In total, Lumicore's invalidity contentions identify six prior-art references asserted against the '847 Patent. See Ex. 5 (Lumicore P.R. 3-3 Invalidity Contentions) at 12–47. Dr. Sundaram's obviousness analysis focuses on the Takahashi-Simonsen combination as the primary ground, though he also addresses certain secondary combinations.
##### b. The '562 Patent
Dr. Sundaram opines that certain claims of the '562 Patent (U.S. Patent No. 9,678,562, "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks") are invalid as obvious under § 103. See Ex. 1 (Sundaram Report) at ¶¶ 288–411. His obviousness analysis relies on combinations of prior-art references, primarily:
• U.S. Patent No. 8,412,007 (Bergmann), issued April 2, 2013 ("Bergmann"), cited for obviousness;
• Dr. Li Wei, "Thermal Solutions for PICs," OFC 2013 Conference Paper (March 2013) ("Li Wei"), which Dr. Sundaram also cites as an anticipation reference under § 102.
As noted above, the '562 and '847 Patents are in the same patent family (continuation relationship). The '562 Patent was originally assigned to Solara Optics, Inc. and acquired by OWS pursuant to the Asset Purchase Agreement dated June 15, 2018.
2. Dr. Sundaram's Failure to Account for Differences Between the Prior Art and the Claims. ##### a. The Obviousness Framework
The Supreme Court established the analytical framework for assessing obviousness under 35 U.S.C. § 103 in Graham v. John Deere Co., 383 U.S. 1 (1966), and refined it in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). The Graham analysis requires four inquiries:
(1) Determining the scope and content of the prior art;
(2) Ascertaining the differences between the prior art and the claims at issue;
(3) Resolving the level of ordinary skill in the pertinent art; and
(4) Evaluating any objective indicia of non-obviousness (also known as secondary considerations).
Graham, 383 U.S. at 17–18; KSR, 550 U.S. at 406–07. All four factors are mandatory elements of a complete obviousness analysis. An expert who omits or short-circuits any of them has not reliably applied the legal framework governing his opinion.
Of particular importance here is the second Graham factor: "ascertaining the differences between the prior art and the claims at issue." An obviousness analysis that fails to identify and address the differences between the cited prior-art references and the claimed invention is fundamentally unreliable. The purpose of the Graham inquiry is to determine whether those differences would have been obvious to a person of ordinary skill in the art at the time of the invention. An expert who does not identify the differences cannot logically reach a reliable conclusion about whether they would have been obvious. See In re Cyclobenzaprine, 676 F.3d at 1074; ActiveVideo Networks, Inc. v. Harborview Holdingsmmc'ns, Inc., 694 F.3d 1312, 1327–28 (Fed. Cir. 2012).
Moreover, where the prior art is combined to render the claims obvious, the expert must provide a meaningful motivation-to-combine analysis explaining why a person of ordinary skill in the art would have been motivated to combine the cited references with a reasonable expectation of success. KSR, 550 U.S. at 418 (while the TSM test is not the sole test, the analysis must provide "some articulated reasoning with some rational underpinning"); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
##### b. Specific Failures — The '847 Patent
Dr. Sundaram's obviousness analysis for the '847 Patent suffers from multiple methodological failures that render it unreliable:
(i) Failure to address missing claim limitations. Dr. Sundaram's claim charts map the Takahashi and Simonsen references to the asserted claim limitations of the '847 Patent. See Ex. 1 (Sundaram Report) at ¶¶ 178–263 and Appendices D-1 through D-6. However, his claim charts fail to address specific limitations that are absent from the cited references. Rather than identifying these gaps and explaining why a person of ordinary skill in the art would have found it obvious to bridge them, Dr. Sundaram either ignores the missing limitations entirely or makes conclusory assertions that they are met without supporting analysis. A claim chart that glosses over missing limitations does not satisfy the Graham framework and cannot support a reliable obviousness opinion.
(ii) Failure to account for disputed claim construction. The parties have a significant claim construction dispute regarding the term "waveguide multiplexer" as it appears in the '847 Patent. OWS proposes that "waveguide multiplexer" means "an optical device that combines multiple optical signals of different wavelengths onto a single waveguide." Lumicore proposes a narrower construction limited to "an arrayed waveguide grating that combines optical signals using a slab coupler and phase-shifted waveguide array." See Ex. 8 (Joint Claim Construction Statement, D.E. 40) at 3–5.
Dr. Sundaram's obviousness analysis assumes — without caveat or qualification — that the Court will adopt Lumicore's proposed construction. See Ex. 1 (Sundaram Report) at ¶ 164. He does not analyze whether his obviousness theory holds under OWS's broader construction, or under any intermediate construction the Court may adopt. If the Court construes "waveguide multiplexer" more broadly than Lumicore proposes — as OWS urges — Dr. Sundaram's entire analysis may collapse, because the prior art he cites may not teach or render obvious a "waveguide multiplexer" under a broader construction. An expert opinion that is contingent on a single disputed claim construction, without addressing alternatives, is unreliable. See O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361–62 (Fed. Cir. 2008).
(iii) Failure to address the "low insertion loss" limitation. The '847 Patent's title and claims emphasize "low insertion loss" as a key feature of the claimed waveguide multiplexer. Dr. Sundaram does not analyze whether the combination of Takahashi and Simonsen would achieve the "low insertion loss" performance characteristic claimed in the '847 Patent. See Ex. 1 (Sundaram Report) at ¶¶ 178–263 (no discussion of insertion-loss performance). He does not cite any data, simulation, or analysis demonstrating that combining the teachings of these two references would result in a device meeting the claimed performance parameters. This is not a trivial omission — insertion loss is a critical performance parameter for waveguide multiplexers, and the '847 Patent's contribution to the art was specifically achieving low insertion loss in a multi-channel silicon photonic multiplexer architecture.
(iv) Conclusory motivation-to-combine analysis. Dr. Sundaram does not provide a meaningful motivation-to-combine analysis explaining why a person of ordinary skill in the art would have been motivated to combine Takahashi with Simonsen with a reasonable expectation of success. His report contains only the conclusory statement that "one skilled in the art would find it obvious to combine the teachings of Takahashi and Simonsen to arrive at the claimed invention." See Ex. 1 (Sundaram Report) at ¶ 266. This bare assertion, devoid of any technical reasoning or analysis, is the quintessential ipse dixit that Daubert prohibits. See Joiner, 522 U.S. at 146.
Takahashi describes a dense WDM silicon photonic multiplexer structure published in 2014, while Simonsen is a PCT application filed in 2015 that addresses a different aspect of waveguide design. Dr. Sundaram does not explain what specific teaching in Simonsen a person of ordinary skill would have identified as relevant to the Takahashi architecture, how the teachings would have been integrated, or why a person of ordinary skill would have expected the resulting combination to work — let alone to achieve the "low insertion loss" feature that distinguishes the '847 Patent.
##### c. Specific Failures — The '562 Patent
Dr. Sundaram's obviousness analysis for the '562 Patent is similarly deficient:
(i) Failure to address the "micro-channel heat sink" limitation. The parties dispute the construction of the term "micro-channel heat sink" as used in the '562 Patent. OWS proposes the construction "a heat-dissipating structure containing channels with a hydraulic diameter of less than 1 mm." Lumicore proposes a narrower construction: "a closed-loop liquid-cooling system with channels having a hydraulic diameter between 10 µm and 200 µm." See Ex. 8 (Joint Claim Construction Statement, D.E. 40) at 6–8.
Dr. Sundaram's analysis of the Bergmann patent and the Li Wei conference paper does not explain how the prior art's thermal management structures correspond to the specific micro-channel geometry and configuration claimed in the '562 Patent under either proposed construction. See Ex. 1 (Sundaram Report) at ¶¶ 312–385. The Bergmann patent describes a thermal management approach for electronic circuits generally, and the Li Wei conference paper discusses thermal solutions for PICs at a high level. Neither reference discloses the specific embedded micro-channel heat-sink architecture claimed in the '562 Patent, and Dr. Sundaram does not bridge the gap between the prior art's disclosures and the claims' requirements.
(ii) Failure to address priority-date issues. The '562 Patent was filed on November 22, 2014, and issued on June 13, 2017. The prior-art status of certain references cited by Dr. Sundaram may depend on the effective filing date of the '562 Patent and any swearing-behind evidence that OWS may present. Dr. Sundaram's report does not address these priority-date issues or explain why each reference he relies upon qualifies as prior art under 35 U.S.C. § 102 as of the relevant date. See Ex. 1 (Sundaram Report) at ¶¶ 288–411 (no analysis of prior-art qualification dates). An obviousness opinion that fails to establish that the cited references actually qualify as prior art under the applicable statutory provision is unreliable on its face.
(iii) Conclusory motivation-to-combine analysis. As with his '847 Patent analysis, Dr. Sundaram provides no meaningful explanation of why a person of ordinary skill in the art would have been motivated to combine Bergmann with Li Wei, or how the combination would arrive at the specific claimed invention rather than the prior art's own disclosed solutions. See Ex. 1 (Sundaram Report) at ¶ 388 ("A person of ordinary skill in the art would have been motivated to combine the teachings of Bergmann and Li Wei to arrive at the claimed method."). This bare conclusion provides no analytical framework for the jury to evaluate and constitutes precisely the type of conclusory ipse dixit that Daubert and its progeny require the Court to exclude.
The Bergmann patent addresses thermal management for electronic circuits in general, using cooling architectures that differ significantly from the embedded micro-channel heat sinks claimed in the '562 Patent. The Li Wei conference paper discusses thermal solutions for PICs but does not disclose the specific micro-channel geometry, materials, or integration methods required by the '562 Patent claims. Dr. Sundaram does not explain what specific features of Li Wei would have prompted a person of ordinary skill to modify the Bergmann architecture, how such modifications would have been implemented, or why a person of ordinary skill would have expected the resulting combination to achieve the thermal performance characteristics of the claimed invention.
3. Dr. Sundaram's Failure to Address Secondary Considerations of Non-Obviousness. A complete and reliable obviousness analysis must address the fourth Graham factor: objective indicia of non-obviousness, also known as secondary considerations. These include, but are not limited to: commercial success of products practicing the patented invention; long-felt but unsolved need in the relevant industry; failure of others to achieve the claimed invention; and evidence of copying by the accused infringer. See Graham, 383 U.S. at 17–18; Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349–50 (Fed. Cir. 2012). Secondary considerations are not merely a tiebreaker or an afterthought; they serve as "a guard against slipping into use of hindsight and to resist the temptation to read into the prior art the teachings of the invention in issue." Graham, 383 U.S. at 36.
OWS has identified substantial evidence of secondary considerations in this case:
Commercial success. OWS's fiscal year 2023 revenue was $487.3 million, of which approximately $310 million is attributable to products practicing the asserted patents — specifically, the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families. See Ex. 9 (Secondary Considerations Evidence). The nexus between the commercial success and the patented features is strong: these product lines incorporate the waveguide multiplexer architecture of the '847 Patent, the thermal management methods of the '562 Patent, the coherent transceiver design of the '193 Patent, and the grating coupler design of the '015 Patent as key differentiating features.
Long-felt but unsolved need. There is documented evidence of a long-standing industry need for low-insertion-loss waveguide multiplexing solutions for hyperscale data-center interconnects. Before OWS's innovations, the industry struggled to achieve the combination of high channel count, low insertion loss, and silicon-photonic integration that the '847 Patent claims. Trade publications, conference proceedings, and industry roadmaps from the 2010–2015 period identify this need as a critical bottleneck for next-generation optical interconnect technology.
Failure of others. At least three competitors — including companies with substantial engineering resources — attempted similar silicon photonic multiplexer and thermal management designs before OWS's innovations and failed to achieve comparable performance. OWS has identified these competitors and their failed efforts in its discovery responses and expert materials.
Copying. The record contains compelling evidence of copying by Lumicore. As discussed above, Dr. Sandra Michaud admitted in her November 19, 2024 deposition that the LumiLink 400G-ZR+ design team reviewed OWS's published patent application No. 2018/0123456 during the product design phase in 2021–2022. See Ex. 3 (Michaud Dep. Tr.) at 147:8–148:22. Raymond Bautista admitted that no formal design-around analysis was commissioned before the LumiEdge 1600G-LR launch. See Ex. 4 (Bautista Dep. Tr.) at 88:14–90:7. And Melissa Chen is expected to testify about the LumiLink design team's direct access to and discussion of OWS's published applications. See Ex. 10. This evidence, taken together, strongly supports an inference of copying.
Dr. Sundaram either ignores these secondary considerations entirely or dismisses them in a single conclusory paragraph without analysis. See Ex. 1 (Sundaram Report) at ¶¶ 278–283 (entire discussion of secondary considerations for '847 Patent, consisting of six paragraphs totaling fewer than 200 words, without engagement with OWS's specific evidence); ¶¶ 399–404 (similar treatment for '562 Patent). He does not address OWS's commercial-success evidence, does not analyze the nexus between the patented features and the commercial success of OWS's products, does not discuss the long-felt need in the industry, does not address the documented failure of others, and does not engage with the evidence of Lumicore's copying.
An obviousness opinion that fails to meaningfully address substantial evidence of secondary considerations is unreliable and should be excluded. See Transocean, 699 F.3d at 1349–50 (reversing finding of obviousness where the district court failed to adequately consider secondary considerations); Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1358 (Fed. Cir. 2013) ("Secondary considerations must be considered in every obviousness analysis."); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983) ("Evidence of secondary considerations may often be the most probative and cogent evidence in the record."). Dr. Sundaram's wholesale failure to engage with this evidence is not a minor analytical gap that can be explored on cross-examination; it is a fundamental methodological deficiency that renders his obviousness opinions unreliable.
4. Dr. Sundaram's POSITA Definition Is Unreliable. The third Graham factor requires "resolving the level of ordinary skill in the pertinent art." The definition of a person of ordinary skill in the art ("POSITA") is critical to the obviousness analysis because it sets the baseline against which the differences between the prior art and the claimed invention are evaluated. A POSITA definition that is improperly calibrated — either inflated or deflated — distorts the entire analysis.
OWS's technical expert, Dr. Caroline Ashford, Professor of Electrical Engineering & Photonics at the Northfield Institute of Technology, defines the POSITA for the asserted patents as a person with a Master of Science or Doctor of Philosophy degree in electrical engineering, photonics, or a closely related field, and at least three years of professional experience in the design, fabrication, or testing of silicon-photonic integrated circuits. See Ex. 7 (Ashford Declaration) at ¶¶ 18–23. This definition reflects the actual skill level of engineers working in the silicon photonics field at the relevant time.
Dr. Sundaram's POSITA definition, as set forth in his report, improperly inflates the level of ordinary skill by attributing to the hypothetical POSITA an unrealistically broad base of knowledge spanning multiple distinct sub-disciplines of photonics and semiconductor engineering. See Ex. 1 (Sundaram Report) at ¶¶ 42–48. By inflating the POSITA's knowledge and skill, Dr. Sundaram's analysis effectively attributes to the person of ordinary skill the ability to combine disparate references from different sub-fields with ease — making virtually any combination of references appear obvious. This is a well-recognized methodological flaw. See Innovention Toys, LLC v. MGA Entm't, Inc., 637 F.3d 1314, 1322 (Fed. Cir. 2011) (criticizing an inflated POSITA definition that "essentially swallow[ed] the obviousness analysis"); Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1257 (Fed. Cir. 2007).
Moreover, Dr. Sundaram does not consistently apply his own POSITA definition throughout his analysis. In some portions of his report, he attributes knowledge and capabilities to the POSITA that exceed even his own inflated definition. See, e.g., Ex. 1 (Sundaram Report) at ¶ 235 (assuming the POSITA would "readily understand" a complex multi-step integration process without citing any basis in the prior art or the POSITA's experience). In other portions, he appears to apply a different, lower skill level without explanation. This inconsistency further undermines the reliability of his analysis.
V. THE CHALLENGED OPINIONS WOULD CONFUSE AND MISLEAD THE JURY
If admitted, Dr. Sundaram's unreliable opinions would present the jury with a veneer of scientific authority on issues where the underlying methodology is fundamentally flawed. This risk is not hypothetical or speculative — it is inherent in the nature of expert testimony on complex technical subjects.
With respect to the prior-conception defense for the '015 Patent, the jury would be asked to credit Lumicore's own internal documents as proof that Lumicore conceived of the claimed polarization-diverse grating coupler invention before OWS's priority date. The jury would hear Dr. Sundaram — a credentialed professor of electrical engineering — testify that these documents establish prior conception, without any basis to understand that such documents are legally and factually insufficient in the absence of independent corroboration. The jury has no independent means to evaluate the authenticity, dating, or provenance of Lumicore's internal documents, and Dr. Sundaram's imprimatur would lend false credibility to evidence that does not meet the threshold required by Federal Circuit law.
With respect to the obviousness opinions for the '847 and '562 Patents, the jury would be asked to accept combination analyses that skip over the most critical element of the Graham v. John Deere inquiry: ascertaining the differences between the prior art and the claimed inventions. The jury would hear Dr. Sundaram testify that "one skilled in the art would find it obvious" to combine certain prior-art references, without any meaningful analysis of why such a combination would have been undertaken, how the combination would have been implemented, or whether the resulting device or method would have achieved the claimed invention's specific features and performance characteristics. The jury — composed of laypersons unfamiliar with the intricacies of silicon photonic waveguide design, thermal management of PICs, and polarization-diverse grating coupling — would have no basis to independently evaluate the sufficiency of Dr. Sundaram's combination analysis.
The prejudice to OWS is substantial. OWS seeks approximately $210 million in damages in this case. The validity of the asserted patents is central to liability and damages — if the jury credits Dr. Sundaram's invalidity opinions, OWS may be deprived of its patent rights and its right to compensation for Lumicore's infringement. Unreliable expert opinions on invalidity could improperly sway the jury on this dispositive issue.
The Court's gatekeeping role is especially important in this case because the technology at issue — silicon photonics, waveguide multiplexing, coherent optical transceivers, thermal management of photonic integrated circuits, and polarization-diverse grating couplers — is highly complex and far removed from the everyday experience of jurors. The jury will rely heavily on expert testimony to understand the technical issues and evaluate the competing claims. Allowing unreliable expert testimony to reach the jury would undermine the integrity of the trial process and violate the gatekeeping principles established by Daubert and its progeny.
VI. RELIEF REQUESTED
For the foregoing reasons, Plaintiff Optiwave Semiconductor Corp. respectfully requests that the Court enter an order:
1. Excluding Dr. Rajesh Sundaram's opinions regarding the invalidity of the '015 Patent (U.S. Patent No. 11,402,015) based on Lumicore's prior-conception defense, including all testimony, demonstratives, and exhibits relying on Lumicore's uncorroborated internal design documents dated 2016–2017;
2. Excluding Dr. Rajesh Sundaram's opinions regarding the obviousness of the '847 Patent (U.S. Patent No. 10,234,847) and the '562 Patent (U.S. Patent No. 9,678,562) claims to the extent those opinions: (a) fail to identify and address the differences between the cited prior-art references and the claimed inventions; (b) fail to provide a reliable motivation-to-combine analysis; and (c) fail to meaningfully address secondary considerations of non-obviousness;
3. Precluding Dr. Sundaram from offering any testimony at trial on these excluded topics, including through demonstratives, summaries, or references in other portions of his testimony; and
4. Granting such other and further relief as the Court deems just and proper.
VII. CONCLUSION
Plaintiff Optiwave Semiconductor Corp. has demonstrated that two specific categories of Dr. Rajesh Sundaram's expert opinions fail to meet the reliability requirements of Federal Rule of Evidence 702 and the gatekeeping standards of Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), and Kumho Tire Co. v. Carmichael, 526 U.S. 137 (1999).
First, Dr. Sundaram's prior-conception opinions regarding the '015 Patent are built on an insufficient evidentiary foundation — uncorroborated internal Lumicore design documents authored by interested parties — and fail to address or satisfy the Federal Circuit's corroboration requirement. His wholesale reliance on self-serving corporate documents, without any independent verification, renders his prior-conception opinion fundamentally unreliable.
Second, Dr. Sundaram's obviousness opinions regarding the '847 and '562 Patents fail to apply the governing analytical framework established by Graham v. John Deere Co. and KSR International Co. v. Teleflex Inc. He does not identify or address the differences between the cited prior-art references and the claimed inventions. He does not provide a meaningful motivation-to-combine analysis. He does not account for disputed claim constructions. And he either ignores or summarily dismisses substantial evidence of secondary considerations of non-obviousness, including commercial success, long-felt need, failure of others, and copying.
These are not minor analytical gaps that go to the weight of the evidence. They are fundamental methodological failures that go to the admissibility of the evidence. The reliability requirements of Rule 702 and Daubert demand that expert testimony offered to the jury be grounded in sufficient facts and data, employ reliable principles and methods, and reflect a reliable application of those principles and methods to the facts of the case. Dr. Sundaram's challenged opinions fail each of these requirements.
OWS respectfully urges the Court to exercise its gatekeeping function and exclude the identified portions of Dr. Sundaram's expert testimony.
Respectfully submitted,
November 1, 2025
CALDERWOOD & HARKNESS LLP
By: ________
Alan Ngo (CA Bar No. 287541; admitted pro hac vice E.D. Tex.) 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 486-5000 Facsimile: (213) 486-5001
Email: alan.ngo@calderwoodharkness.com
Marcus Delgado (TX Bar No. 24098712; CA Bar No. 301456) Wendy Schultz (CA Bar No. 294817; admitted pro hac vice E.D. Tex.) Omar Siddiqui (CA Bar No. 308923; admitted pro hac vice E.D. Tex.)
WHITMORE & CALLAHAN LLP
James "Jim" Callahan (TX Bar No. 03876210) 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 597-6200 Facsimile: (903) 597-6201
Email: jcallahan@whitmorecallahan.com
Attorneys for Plaintiff Optiwave Semiconductor Corp.
CERTIFICATE OF SERVICE
I hereby certify that on November 1, 2025, the foregoing Plaintiff Optiwave Semiconductor Corp.'s Motion to Exclude Portions of the Expert Testimony of Dr. Rajesh Sundaram Pursuant to Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), together with all exhibits and attachments thereto, was served on all counsel of record via the Court's CM/ECF electronic filing system, which will send notification of such filing to the following:
Catherine "Kate" Rourke Darren Cho Samantha Briggs Rohan Iyer HAWTHORNE VEGA & CRUZ LLP 600 Congress Avenue, Suite 2400 Austin, Texas 78701
Maria Garza TRASK EDDINGTON LLP 425 East Front Street, Suite 300 Tyler, Texas 75701
Attorneys for Defendant Lumicore Technologies, Inc.
By: ________
Alan Ngo
CERTIFICATE OF CONFERENCE
Pursuant to Local Rule CV-7(h) for the Eastern District of Texas, I hereby certify that counsel for Plaintiff Optiwave Semiconductor Corp. conferred with counsel for Defendant Lumicore Technologies, Inc. regarding the relief sought in this motion. Specifically, on October 21, 2025, Wendy Schultz of Calderwood & Harkness LLP conferred by telephone with Samantha Briggs of Hawthorne Vega & Cruz LLP regarding Plaintiff's intention to file this motion and the specific relief requested herein. Counsel for Lumicore stated that Lumicore opposes the requested relief and that the parties were unable

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

OPTIWAVE SEMICONDUCTOR CORP.,

LUMICORE TECHNOLOGIES, INC.,

I. INTRODUCTION

II. FACTUAL AND PROCEDURAL BACKGROUND

III. LEGAL STANDARD

IV. ARGUMENT

V. THE CHALLENGED OPINIONS WOULD CONFUSE AND MISLEAD THE JURY

VI. RELIEF REQUESTED

VII. CONCLUSION

CALDERWOOD & HARKNESS LLP

WHITMORE & CALLAHAN LLP

CERTIFICATE OF SERVICE

CERTIFICATE OF CONFERENCE

Record

Parties

Dates

Amounts