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UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S MOTION FOR PARTIAL SUMMARY JUDGMENT THAT U.S. PATENT NO. 11,402,015 IS NOT INVALID BASED ON DEFENDANT'S PRIOR-CONCEPTION DEFENSE

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I. INTRODUCTION

Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") respectfully moves this Court, pursuant to Federal Rule of Civil Procedure 56(a), for partial summary judgment on a discrete and well-defined issue: the legal insufficiency of Defendant Lumicore Technologies, Inc.'s ("Lumicore" or "Defendant") affirmative defense that U.S. Patent No. 11,402,015 (the "'015 Patent") is invalid based on alleged prior conception by Lumicore engineers.

The '015 Patent, titled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," was filed on August 30, 2019, and issued on August 2, 2022, to OWS as assignee. Critically, the '015 Patent claims priority to Provisional Application No. 62/499,117, filed on April 7, 2017. That filing date — April 7, 2017 — is the earliest effective priority date of the '015 Patent and establishes the temporal benchmark against which any prior-conception defense must be measured.

Lumicore's Patent Rule 3-3 Invalidity Contentions, served on October 14, 2024 (D.E. 36), assert — among other invalidity defenses — that certain internal Lumicore design documents dated 2016–2017 demonstrate prior conception by Lumicore engineers of the inventions claimed in the '015 Patent, thereby rendering the patent invalid. This defense is legally untenable for two independent reasons, each of which is sufficient, standing alone, to warrant summary judgment.

First, the internal documents on which Lumicore relies — to the extent they disclose the specific polarization-diverse grating coupler invention claimed in the '015 Patent — are dated no earlier than May 2017. Every one of these documents post-dates the '015 Patent's earliest effective priority date of April 7, 2017. Lumicore's earlier documents (from mid-2016 through early 2017) address only generalized photonic integrated circuit design concepts and do not disclose the specific structural and functional features of the polarization-diverse grating coupler claimed in the asserted claims. As a matter of law, documents that post-date the priority date of the patent at issue cannot establish prior conception, and documents that pre-date the priority date but fail to disclose the claimed invention are legally irrelevant.

Second, even if certain of Lumicore's documents were deemed to pre-date the April 7, 2017 priority date and were somehow construed to disclose the claimed invention — which they do not — Lumicore's evidence of prior conception is fatally uncorroborated. The Federal Circuit has long required that a party asserting prior conception must corroborate the alleged conception through evidence from a source independent of the alleged prior inventor. Here, every document Lumicore cites was authored by Lumicore employees — interested parties in this litigation — and Lumicore has not identified any independent witness, third-party communication, publication, or other external evidence to corroborate the alleged conception dates or inventive contributions. The complete absence of any corroborating evidence is dispositive.

The stakes are substantial. The '015 Patent is asserted against Lumicore's LumiLink 800G-DR8 and LumiEdge 1600G-LR products, which generated combined fiscal year 2023 revenues of approximately $170.1 million ($128.4 million and $41.7 million, respectively). OWS has asserted Claims 1, 5, 8, 12, and 16 of the '015 Patent against these products. Lumicore's prior-conception defense, if permitted to proceed to trial, would inject an unfounded and legally deficient defense into the proceedings, wasting trial time, confusing the jury, and prejudicing OWS.

Accordingly, OWS respectfully requests that the Court enter an order granting partial summary judgment, holding that Lumicore's prior-conception defense to the '015 Patent fails as a matter of law, and precluding Lumicore from presenting this defense at trial.

II. STATEMENT OF UNDISPUTED MATERIAL FACTS

Pursuant to Local Rule CV-56(a), OWS submits the following statement of undisputed material facts. Each fact is supported by citations to the record and, where applicable, to the supporting declarations and exhibits filed concurrently with this Motion.

A. The '015 Patent and Its Priority Chain

1. The '015 Patent (U.S. Patent No. 11,402,015), titled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," was filed as Application No. 16/555,814 on August 30, 2019, and issued on August 2, 2022, to Optiwave Semiconductor Corp. as assignee. (Complaint Ex. D, D.E. 1-4; Ex. A hereto ('015 Patent face page).)

2. The '015 Patent expressly claims the benefit of U.S. Provisional Application No. 62/499,117, filed on April 7, 2017, pursuant to 35 U.S.C. § 119(e). (Ex. A ('015 Patent, Related Applications section); Ex. B (Provisional Application No. 62/499,117).)

3. A related patent in the OWS portfolio, U.S. Patent No. 10,891,193 (the "'193 Patent"), titled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate," also claims priority to the same Provisional Application No. 62/499,117 (filed April 7, 2017). ('193 Patent face page; prosecution history excerpts at Ex. H.)

4. The named inventors of the '015 Patent are Dr. Jian-Wei Huang, Chief Technology Officer of OWS, and Dr. Nikolai Petrov, Vice President of Engineering, Photonics Division, of OWS. (Ex. A ('015 Patent face page).)

5. The '015 Patent was prosecuted before the United States Patent and Trademark Office by Dr. Martin Chu of Cascade IP Advisors, LLC, located at 1550 Crystal Drive, Suite 600, Arlington, Virginia 22202. (Ex. H (Prosecution history, attorney of record).)

6. The earliest effective priority date of the '015 Patent is April 7, 2017, which is the filing date of Provisional Application No. 62/499,117. OWS's technical expert, Dr. Caroline Ashford, has opined that the Provisional Application provides full written-description and enablement support for each element of the asserted claims, including Claims 1, 5, 8, 12, and 16. (Ex. A; Ex. B; Ex. H; Declaration of Dr. Caroline Ashford ("Ashford Decl.") ¶¶ 14–29.)

B. OWS's Chain of Title

7. OWS was the original assignee of the '015 Patent and has maintained continuous ownership of the patent since the date of its filing. No assignment, transfer, license, or other conveyance has altered OWS's status as the sole owner of the '015 Patent. (USPTO Assignment Records; OWS Initial Disclosures, D.E. 32.)

8. All required maintenance fees on the '015 Patent have been paid and are current. The '015 Patent remains in force and has not been subject to any reexamination, inter partes review, or post-grant review proceeding. (USPTO Records.)

9. OWS currently holds a portfolio of 142 issued United States patents and 58 pending United States patent applications, spanning silicon photonic transceiver technology, waveguide architectures, photonic integrated circuit packaging, and related fields. (OWS Initial Disclosures, D.E. 32.)

C. Lumicore's Prior-Conception Defense

10. On October 14, 2024, Lumicore served its Patent Rule 3-3 Invalidity Contentions (D.E. 36), which assert, among other defenses, that the '015 Patent is invalid based on prior conception by Lumicore engineers. (Ex. C (Lumicore Invalidity Contentions, relevant sections on prior-conception defense).)

11. Lumicore's invalidity contentions cite internal Lumicore design documents dated 2016–2017 as the sole documentary basis for its prior-conception defense with respect to the '015 Patent. No external prior art references are cited in support of this particular defense. (Ex. C (Lumicore Invalidity Contentions, '015 Patent section).)

12. Lumicore has identified three categories of internal documents purportedly supporting its prior-conception defense: (a) engineering design notebooks maintained by Lumicore photonics engineers; (b) internal presentation slides prepared for Lumicore management and engineering team meetings; and (c) internal email correspondence among Lumicore engineers concerning photonic integrated circuit design. (Ex. C; Lumicore document productions (Ex. D).)

13. Upon careful review and cataloging of the entirety of Lumicore's document productions cited in its invalidity contentions, the internal documents produced by Lumicore and relied upon in its prior-conception defense bear dates ranging from mid-2016 through late 2017. Critically, the documents that purport to show conception of the specific polarization-diverse grating coupler structure claimed in the '015 Patent — including any reference to a polarization-splitting functionality, a two-dimensional grating structure, or the simultaneous coupling of TE and TM polarization modes — are dated no earlier than May 2017, which is after the April 7, 2017 priority date of Provisional Application No. 62/499,117. (Ex. D (Lumicore documents by Bates number, with date annotations); Declaration of Wendy Schultz ("Schultz Decl.") ¶¶ 5–18 (cataloging dates of each cited document).)

14. Lumicore's earliest documents, dated mid-2016 through early 2017, relate to general photonic integrated circuit ("PIC") design concepts — including generic waveguide layouts, basic grating architectures for fiber-to-chip coupling, and general system-level block diagrams for coherent optical transceivers. These documents do not contain any reference to a "polarization-diverse grating coupler," do not disclose any polarization-splitting element, do not describe a two-dimensional grating structure, and do not address the simultaneous coupling of TE and TM modes as recited in the asserted claims of the '015 Patent. (Ex. D; Ashford Decl. ¶¶ 30–48 (element-by-element analysis of pre-April 2017 documents).)

D. Lumicore's Failure to Corroborate Its Prior-Conception Defense

15. In its responses to OWS's Interrogatory No. 14 (seeking identification of all witnesses with knowledge of the alleged prior conception and all evidence corroborating the alleged conception), Lumicore did not identify any independent witness — i.e., any witness who is not a current or former Lumicore employee — who can corroborate the conception dates or the inventive contribution allegedly reflected in the internal documents. (Ex. G (Lumicore Interrogatory Responses); Schultz Decl. ¶¶ 19–24.)

16. During her deposition on November 19, 2024, Lumicore's Chief Technology Officer, Dr. Sandra Michaud, testified that she could not identify specific non-infringing design alternatives for the accused products. Relevant to this Motion, Dr. Michaud was unable to specifically recall when the grating coupler designs reflected in the internal documents were first conceived, stating that she had only a "general sense" that the work "was happening around 2016 or 2017" but could not pinpoint specific dates. Dr. Michaud further testified that she was not aware of any disclosure of the alleged inventive concepts to any party outside of Lumicore prior to the filing of Lumicore's own patent applications in 2018. (Ex. E (Michaud Dep. Tr. at 87:4–88:19; 112:7–113:14; 147:22–149:3).)

17. Dr. Eric Dalmqvist, Lumicore's Vice President of Product Development, who is identified in Lumicore's invalidity contentions as one of the engineers involved in the alleged prior conception, has not been deposed on this specific topic to date. Lumicore has not proffered a declaration from Dr. Dalmqvist or any other Lumicore engineer corroborating the specific dates of conception or identifying any independent corroborating evidence. (Schultz Decl. ¶ 25.)

18. Lumicore's Rule 30(b)(6) corporate designee, deposed on the topic of "the factual basis for Lumicore's invalidity contentions including its prior-conception defense," did not provide testimony corroborating the specific dates of conception and was unable to identify any corroborating witness independent of Lumicore. When asked to identify any third party to whom the alleged inventive concepts had been disclosed prior to April 7, 2017, the designee testified: "I'm not aware of any such disclosure." (Ex. F (30(b)(6) Dep. Tr. at 63:8–64:22; 71:3–72:11).)

19. The internal documents that Lumicore relies upon are authored exclusively by Lumicore employees who are interested parties in this litigation. These authors include engineers who remain employed by Lumicore and who, as employees of the defendant accused of patent infringement, have a direct financial interest in the outcome of this case. Their documentary and testimonial evidence, standing alone, cannot satisfy the well-established corroboration requirement for a prior-conception defense. (Lumicore document productions (Ex. D); legal authority discussed infra Section IV.C.)

20. No contemporaneous third-party evidence of any kind — including, without limitation, disclosures to parties outside Lumicore, academic or industry publications, customer or vendor communications, foundry design submissions, conference presentations, provisional or non-provisional patent applications, or any other external filing — corroborates Lumicore's alleged conception of the polarization-diverse grating coupler claimed in the '015 Patent prior to the April 7, 2017 priority date. (Lumicore discovery responses (Exs. F, G); Schultz Decl. ¶¶ 26–30.)

E. Background on Lumicore Technologies, Inc.

21. Lumicore Technologies, Inc. was founded in 2015 and is a Delaware corporation headquartered at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. Lumicore designs, manufactures, and sells silicon photonic transceiver products for data center and telecommunications applications. (Public records; Lumicore 10-K (FY 2023).)

22. Lumicore conducted its initial public offering on the Nasdaq Stock Market in March 2022 at an offering price of $24.00 per share. At the time of the filing of the Complaint in this action on April 22, 2024, Lumicore's share price was approximately $37.00 per share, with approximately 91.8 million shares outstanding, representing an approximate market capitalization of $3.4 billion. (Public filings; Lumicore 10-K; market data.)

23. Lumicore's Chief Executive Officer is Thomas "Tom" Kessler. Its Chief Technology Officer is Dr. Sandra Michaud. Its General Counsel is Raymond Bautista. (Public filings; discovery responses.)

F. The Accused Products

24. The '015 Patent is asserted in this action against two Lumicore products: (a) the LumiLink 800G-DR8 silicon photonic transceiver module, which was commercially launched in the first quarter of 2023 and generated fiscal year 2023 revenue of approximately $128.4 million; and (b) the LumiEdge 1600G-LR silicon photonic transceiver module, which was commercially launched in the fourth quarter of 2023 and generated fiscal year 2023 revenue of approximately $41.7 million. (Complaint, D.E. 1; OWS Infringement Contentions, D.E. 32; Lumicore financial data produced in discovery.)

25. The asserted claims of the '015 Patent include Claims 1, 5, 8, 12, and 16. OWS asserts literal infringement of Claims 1, 5, 8, and 16 and asserts infringement of Claim 12 under both literal infringement and the doctrine of equivalents. (OWS Infringement Contentions, D.E. 32.)

III. LEGAL STANDARD

A. Summary Judgment Under Federal Rule of Civil Procedure 56

A court "shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). The purpose of summary judgment is to "isolate and dispose of factually unsupported claims or defenses" and to avoid unnecessary trials on claims or defenses that cannot be sustained on the record. Celotex Corp. v. Catrett, 477 U.S. 317, 323–24 (1986).

The moving party bears the initial burden of identifying the basis for its motion and "identifying those portions of 'the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any,' which it believes demonstrate the absence of a genuine issue of material fact." Id. at 323. A genuine dispute of material fact exists only if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).

Once the movant has met its initial burden, the burden shifts to the nonmoving party to "set forth specific facts showing that there is a genuine issue for trial." Id. at 250. The nonmoving party "must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). The court must view the evidence in the light most favorable to the nonmoving party, drawing all reasonable inferences in its favor. Id. at 587. However, the nonmoving party must come forward with evidence that would be sufficient to support a jury verdict in its favor; "[t]he mere existence of a scintilla of evidence" is not enough. Anderson, 477 U.S. at 252.

Partial summary judgment on a discrete defense is both appropriate and encouraged where the defense fails as a matter of law on the undisputed record. Fed. R. Civ. P. 56(a), (g); see also Strauss v. Credit Lyonnais, S.A., 249 F.R.D. 429, 438 (E.D.N.Y. 2008) (noting that partial summary judgment promotes judicial efficiency by narrowing the issues for trial).

B. Burden of Proof on Patent Invalidity

A patent issued by the United States Patent and Trademark Office enjoys a statutory presumption of validity. 35 U.S.C. § 282(a) ("A patent shall be presumed valid."). The party challenging the validity of a patent bears the burden of proving invalidity by clear and convincing evidence. Kestrel Partners LLC v. i4i Ltd. P'ship, 564 U.S. 91, 95 (2011) ("We consider whether § 282 requires an invalidity defense to be proved by clear and convincing evidence. We hold that it does.").

The clear-and-convincing-evidence standard is "a heavy burden" that requires evidence that "place[s] in the ultimate factfinder an abiding conviction that the truth of [the] factual contentions [is] 'highly probable.'" Colorado v. New Mexico, 467 U.S. 310, 316 (1984) (quoted in Ashbury Holdings, 564 U.S. at 100). This heightened standard reflects the deference owed to the expertise of the Patent Office examiners who reviewed and allowed the patent. Ashbury Holdings, 564 U.S. at 111.

As applied here, Lumicore bears the burden of proving by clear and convincing evidence that it conceived of the inventions claimed in the '015 Patent prior to OWS's earliest effective priority date of April 7, 2017. If Lumicore cannot present evidence from which a reasonable jury could find prior conception by clear and convincing evidence, summary judgment is appropriate.

C. Legal Requirements for Prior Conception

Conception is "the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice." Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986) (internal quotation marks omitted). Conception is complete only when "the idea is so clearly defined in the inventor's mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation." Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994).

A party asserting prior conception must demonstrate that every element of the claimed invention was conceived before the asserted priority date. Id. Conception of only a portion of the claimed invention, or of a generalized concept that does not encompass every claim limitation, is insufficient. Id.; see also Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985) ("Conception must encompass all limitations of the claimed invention, including . . . every element and every limitation of the claim.").

Critically, the law imposes a stringent corroboration requirement on claims of prior conception. "An alleged conception must be proved by corroborating evidence, not merely by the testimony of the alleged prior inventor." Price v. Symsek, 988 F.2d 1187, 1194–95 (Fed. Cir. 1993). The rule of corroboration requires evidence from a source independent of the alleged inventor or inventors. Id. This requirement "arose out of a concern that inventors testifying in patent infringement or interference cases would be tempted to remember facts favorable to their case, and the rule was created as a guard against this natural temptation." Singh v. Brake, 222 F.3d 1362, 1367 (Fed. Cir. 2000).

The corroboration requirement applies with particular force where the alleged prior inventor has a financial or litigation interest in the outcome. Reese v. Hurst, 661 F.2d 1222, 1225–26 (C.C.P.A. 1981). This principle extends to employees of a party to the litigation, whose testimony and documentary evidence are inherently suspect due to their employer's interest. Lacks Indus., Inc. v. McKechnie Vehicle Components USA, Inc., 322 F.3d 1335, 1350 (Fed. Cir. 2003).

Internal company documents authored by interested-party employees, standing alone, do not satisfy the corroboration requirement. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1170–71 (Fed. Cir. 2006) (holding that internal laboratory notebooks and records of an interested party were insufficient to corroborate prior conception absent independent evidence); Lacks Indus., 322 F.3d at 1350 (same). The rationale is straightforward: internal documents can be created, altered, or selectively preserved by the interested party, and they do not bear the indicia of reliability that would attend contemporaneous disclosures to third parties, publications, or other external evidence.

IV. ARGUMENT

A. Lumicore's Internal Documents Post-Date the '015 Patent's Priority Date

1. The '015 Patent's Earliest Effective Priority Date Is April 7, 2017

Under 35 U.S.C. § 119(e), a nonprovisional patent application that claims the benefit of a provisional application is entitled to the filing date of the provisional application for all claims that are supported by the provisional application's disclosure. The '015 Patent expressly claims the benefit of Provisional Application No. 62/499,117, filed on April 7, 2017. (Ex. A ('015 Patent, Related Applications section); Ex. B (Provisional Application).) Accordingly, the earliest effective filing date of the '015 Patent is April 7, 2017, for all claims supported by the Provisional Application's disclosure.

The prosecution history of the '015 Patent confirms that the Provisional Application was cited as the basis for priority throughout prosecution, and the patent examiner did not challenge the entitlement to the April 7, 2017 priority date. (Ex. H (Prosecution history excerpts).) Moreover, Lumicore has never challenged OWS's entitlement to the April 7, 2017 priority date in its invalidity contentions or otherwise. (Ex. C (Lumicore Invalidity Contentions).)

OWS's technical expert, Dr. Caroline Ashford — a Professor of Electrical Engineering and Photonics at the Northfield Institute of Technology, with over twenty-five years of experience in silicon photonics, grating coupler design, and photonic integrated circuit architectures — has conducted a detailed analysis of the Provisional Application and has opined that it provides full written-description and enablement support for each element of each of the asserted claims of the '015 Patent, including Claims 1, 5, 8, 12, and 16. (Ashford Decl. ¶¶ 14–29.) Dr. Ashford's analysis demonstrates that the Provisional Application discloses, inter alia: the polarization-diverse grating coupler structure; the two-dimensional grating pattern with specified periodicity; the polarization-splitting element; the simultaneous coupling of TE and TM polarization modes into separate waveguide paths; and the integration of the grating coupler within a silicon photonic transceiver architecture. (Id.)

In short, the April 7, 2017 filing date of the Provisional Application is the earliest effective priority date of the '015 Patent, and the asserted claims are fully supported by the Provisional Application's disclosure. Any evidence of prior conception must therefore pre-date April 7, 2017.

2. Lumicore's Documents Purporting to Show the Claimed Invention Are Dated After April 7, 2017

The undisputed record demonstrates that every Lumicore internal document that purports to disclose the specific polarization-diverse grating coupler structure claimed in the '015 Patent is dated after the April 7, 2017 priority date. A document-by-document analysis of Lumicore's cited references confirms this conclusion:

Engineering Design Notebooks. Lumicore's engineering design notebook entries reflecting a "polarization-diverse grating coupler" concept — the first documents in Lumicore's productions that use this term or describe a functionally equivalent structure — are dated May 14, 2017 and later. (Ex. D (LUMI-00034517 through LUMI-00034542, dated May 14, 2017; LUMI-00034601 through LUMI-00034618, dated May 22, 2017; LUMI-00035127 through LUMI-00035149, dated June 8, 2017).) Each of these entries post-dates the April 7, 2017 priority date by more than one month.

Internal Presentation Slides. Lumicore's internal presentation slides showing a grating coupler design with polarization-diversity features are dated June 20, 2017. (Ex. D (LUMI-00042891 through LUMI-00042919).) The slide deck is titled "Next-Gen Coherent Transceiver Design Review — Grating Coupler Options" and includes, for the first time in Lumicore's productions, a two-dimensional grating coupler schematic with a polarization-splitting element. This document post-dates the April 7, 2017 priority date by more than two months.

Email Correspondence. Lumicore's email correspondence discussing the specific polarization-diverse coupler architecture is dated July 11, 2017 through August 3, 2017. (Ex. D (LUMI-00051203 through LUMI-00051209, dated July 11, 2017; LUMI-00051314 through LUMI-00051318, dated July 28, 2017; LUMI-00051402 through LUMI-00051411, dated August 3, 2017).) These emails contain the first Lumicore references to simultaneous TE/TM mode coupling in a grating coupler context. All of these communications post-date the April 7, 2017 priority date by at least three months.

The Declaration of Wendy Schultz, filed concurrently herewith, provides a comprehensive catalog of each Lumicore document cited in Lumicore's invalidity contentions in support of its prior-conception defense for the '015 Patent. (Schultz Decl. ¶¶ 5–18.) Ms. Schultz's declaration identifies each document by Bates number, date, author(s), and subject matter, and confirms that no document disclosing the specific polarization-diverse grating coupler claimed in the '015 Patent pre-dates April 7, 2017. (Id.)

Because every document disclosing the claimed invention post-dates the priority date, Lumicore's prior-conception defense fails on its face. As a matter of law, a party cannot establish prior conception of a patented invention by relying on documents that are dated after the patent's earliest effective priority date.

3. Lumicore's Pre-Priority-Date Documents (Mid-2016) Do Not Disclose the Claimed Invention

Lumicore's document productions do include certain documents that pre-date the April 7, 2017 priority date. Specifically, documents dated from mid-2016 through early 2017 appear in Lumicore's invalidity contentions. However, a careful analysis of these documents reveals that they relate to general photonic integrated circuit ("PIC") design concepts that bear no meaningful resemblance to the specific polarization-diverse grating coupler invention claimed in the '015 Patent.

The pre-April 2017 documents include: (a) generic waveguide layout drawings and block diagrams for a coherent optical transceiver (LUMI-00012004 through LUMI-00012089, dated June–September 2016); (b) a memorandum discussing general fiber-to-chip coupling strategies, including edge coupling and simple vertical grating coupling, but without any reference to polarization diversity (LUMI-00015678 through LUMI-00015694, dated November 2016); and (c) brainstorming notes for "next-generation transceiver features" that reference "improved coupling efficiency" and "multi-mode considerations" at a high level of generality, without any disclosure of a polarization-diverse grating coupler, a two-dimensional grating structure, a polarization-splitting element, or simultaneous TE/TM mode coupling (LUMI-00017802 through LUMI-00017814, dated January–February 2017). (Ex. D; Ashford Decl. ¶¶ 30–48.)

The claim term "polarization-diverse grating coupler" is central to the asserted claims. The parties have proposed competing constructions for this term:

• OWS's proposed construction: "a grating coupler capable of coupling light of two orthogonal polarization states."

• Lumicore's proposed construction: "a two-dimensional grating coupler with a polarization-splitting element that simultaneously couples TE and TM modes."

Under either party's construction, none of Lumicore's pre-April 2017 documents discloses a polarization-diverse grating coupler. OWS's broader construction requires, at minimum, a grating coupler designed to handle two orthogonal polarization states — a feature entirely absent from Lumicore's 2016 documents, which address only basic, single-polarization coupling strategies. Lumicore's own narrower construction is even more demanding, requiring a two-dimensional grating coupler with a polarization-splitting element that simultaneously couples TE and TM modes. The 2016 documents do not contain any disclosure of a two-dimensional grating structure, any polarization-splitting element, or any simultaneous coupling of TE and TM modes.

Dr. Ashford has conducted an element-by-element comparison of each of Lumicore's pre-April 2017 documents against every limitation of the asserted claims. (Ashford Decl. ¶¶ 30–48.) Her analysis confirms that none of the pre-April 2017 documents discloses: (i) a grating coupler with polarization-diversity functionality; (ii) a two-dimensional grating pattern with the specified periodicity; (iii) a polarization-splitting element; (iv) the simultaneous coupling of TE and TM polarization modes into separate waveguide paths; or (v) the integration of a polarization-diverse grating coupler within the claimed silicon photonic transceiver architecture. (Id.) Dr. Ashford concludes that the pre-April 2017 documents "reflect only general, high-level PIC design concepts that are common knowledge in the field and that do not approach the specific and complete conception of the polarization-diverse grating coupler invention claimed in the '015 Patent." (Ashford Decl. ¶ 48.)

In short, Lumicore's pre-priority-date documents do not and cannot establish conception of the claimed invention. They are too general, too incomplete, and too far removed from the specific structural and functional features of the polarization-diverse grating coupler to satisfy the legal standard for conception.

4. Even Under Lumicore's Own Claim Construction, the Defense Fails on Timing

As noted above, Lumicore has proposed a narrower construction for the term "polarization-diverse grating coupler," requiring "a two-dimensional grating coupler with a polarization-splitting element that simultaneously couples TE and TM modes." Under Lumicore's own construction, the threshold for establishing conception is higher — not lower — because the alleged prior inventor must have formed a definite and permanent idea of a more specifically defined invention.

The record is entirely devoid of any Lumicore document pre-dating April 7, 2017 that discloses a two-dimensional grating coupler with a polarization-splitting element simultaneously coupling TE and TM modes. The first Lumicore document that can even arguably be read to describe such a structure is the engineering notebook entry dated May 14, 2017 (LUMI-00034517), which is more than five weeks after the priority date. (Ex. D; Ashford Decl. ¶ 49.)

Lumicore cannot have it both ways: it cannot advocate for a narrow claim construction to limit the scope of infringement while simultaneously arguing that generalized 2016 design documents — which fail to disclose the very features its own construction requires — establish prior conception. Regardless of which claim construction the Court ultimately adopts, Lumicore's prior-conception defense fails on timing grounds.

B. Lumicore's Prior-Conception Evidence Is Fatally Uncorroborated

Even if Lumicore could somehow establish that its documents pre-date the April 7, 2017 priority date and disclose the claimed invention — which, as demonstrated above, it cannot — Lumicore's prior-conception defense would still fail as a matter of law because its evidence is entirely uncorroborated. This independently dispositive deficiency warrants summary judgment.

1. The Corroboration Rule and Its Rationale

The Federal Circuit has long required that a party asserting prior conception must corroborate its claim through evidence independent of the alleged prior inventor. Singh v. Brake, 222 F.3d 1362, 1367 (Fed. Cir. 2000); Price v. Symsek, 988 F.2d 1187, 1194–95 (Fed. Cir. 1993). The corroboration requirement is "not a mere formality" but a "substantive requirement" rooted in the recognition that "the temptation of a person interested in the outcome of a proceeding to remember facts favorable to himself . . . is a well-recognized psychological phenomenon." Singh, 222 F.3d at 1367.

The corroboration requirement applies not only to oral testimony but also to documentary evidence when the documents at issue are generated by the alleged prior inventor or by the employer of the alleged prior inventor — that is, by an interested party in the litigation. Lacks Indus., Inc. v. McKechnie Vehicle Components USA, Inc., 322 F.3d 1335, 1350 (Fed. Cir. 2003); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1170–71 (Fed. Cir. 2006). This extension of the corroboration rule reflects the reality that internal company documents can be created, altered, backdated, or selectively preserved and produced in litigation, and that they lack the inherent reliability of documents disclosed to independent third parties.

The Federal Circuit applies a "rule of reason" analysis to evaluate the sufficiency of corroboration, examining "the totality of the circumstances" to determine whether the evidence is sufficient to establish prior conception. Kestrel Partners LLC, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1461 (Fed. Cir. 1998). Under this framework, the court considers: (a) the relationship between the corroborating evidence and the critical facts; (b) whether the corroborating evidence is from an interested party; (c) the extent to which the testimony is supported by independent evidence; and (d) the specificity and clarity of the corroborating evidence. Id. Even under this flexible standard, however, "self-serving documents from interested parties do not alone suffice" to establish corroboration. Id.; Lacks Indus., 322 F.3d at 1350.

2. Lumicore's Documents Are Authored Exclusively by Interested-Party Employees

Every document that Lumicore cites in support of its prior-conception defense was authored by employees of Lumicore Technologies, Inc. — the Defendant in this action. These authors include photonics engineers, design team leads, and managers within Lumicore's engineering organization, many of whom remain employed by Lumicore to this day. (Ex. D; Schultz Decl. ¶¶ 31–37.)

Lumicore is the defendant accused of infringing the '015 Patent. Its employees are interested parties whose documentary and testimonial evidence requires independent corroboration under the well-settled law of the Federal Circuit. The engineering notebooks were maintained by Lumicore engineers in the ordinary course of their employment at Lumicore. The presentation slides were prepared by and for Lumicore employees. The email correspondence was exchanged among Lumicore employees using Lumicore's internal email system. (Schultz Decl. ¶¶ 31–37.)

At no point were any of these documents shared with, verified by, disclosed to, or reviewed by any party outside of Lumicore. (Id. ¶ 38.) The documents are purely internal to the company that is now asserting them as evidence of prior conception in defense of a patent infringement claim. This is precisely the type of evidence that the corroboration requirement is designed to guard against.

3. Lumicore Has Failed to Identify Any Corroborating Witness or Independent Evidence

The absence of corroborating evidence in this case is not a matter of degree — it is total. Lumicore has failed to identify or produce any evidence, from any source independent of Lumicore and its employees, that corroborates its alleged prior conception of the invention claimed in the '015 Patent.

Interrogatory Responses. In response to OWS's Interrogatory No. 14, which specifically requested identification of "all persons with knowledge of facts supporting Lumicore's prior-conception defense, including any witness who can corroborate the dates of alleged conception and the inventive contributions reflected in the cited documents," Lumicore identified only current and former Lumicore employees. (Ex. G.) Lumicore did not identify any independent corroborating witness.

30(b)(6) Deposition. Lumicore's Rule 30(b)(6) corporate designee, deposed on the topic of the factual basis for Lumicore's invalidity contentions, was unable to identify any third party to whom the alleged inventive concepts had been disclosed prior to April 7, 2017. When asked directly, the designee testified: "I'm not aware of any such disclosure." (Ex. F (30(b)(6) Dep. Tr. at 63:8–64:22).) The designee further acknowledged that Lumicore had not identified any external publications, patent filings, conference presentations, or vendor communications that corroborated the alleged conception dates. (Id. at 71:3–72:11.)

Dr. Michaud's Deposition. Lumicore's CTO, Dr. Sandra Michaud, testified at her deposition on November 19, 2024 that she could not specifically recall when the grating coupler designs reflected in the internal documents were conceived. (Ex. E (Michaud Dep. Tr. at 87:4–88:19).) Dr. Michaud testified that she had only a "general sense" that the work "was happening around 2016 or 2017" and could not provide a more specific timeframe. (Id. at 112:7–113:14.) Importantly, Dr. Michaud confirmed that she was not aware of any disclosure of the alleged inventive concepts to any party outside of Lumicore prior to Lumicore's own patent filings in 2018. (Id. at 147:22–149:3.) This testimony not only fails to provide corroboration but affirmatively confirms the absence of any external corroborating evidence.

No Declaration from Dr. Dalmqvist. Dr. Eric Dalmqvist, Lumicore's Vice President of Product Development, is identified in Lumicore's invalidity contentions as one of the engineers involved in the alleged prior conception. Despite the centrality of Dr. Dalmqvist to this defense, Lumicore has not proffered a declaration from Dr. Dalmqvist or from any other Lumicore engineer corroborating the specific dates of conception or providing any basis for independent corroboration. (Schultz Decl. ¶ 25.)

No External Evidence of Any Kind. The record is entirely devoid of any external evidence that could corroborate Lumicore's alleged prior conception. There are no publications in peer-reviewed journals or trade publications. There are no conference presentations or posters. There are no provisional or nonprovisional patent applications filed by Lumicore prior to April 7, 2017 that disclose the claimed invention. There are no communications with customers, vendors, foundries (such as silicon photonics fabrication foundries), or any other third parties reflecting the polarization-diverse grating coupler concept. There are no federal or state filings, no grant applications, no investor presentations, and no public disclosures of any kind. (Schultz Decl. ¶¶ 26–30; Lumicore discovery responses (Exs. F, G).)

This complete absence of any independent corroborating evidence is dispositive. The Federal Circuit has consistently held that uncorroborated internal documents from interested parties cannot sustain a prior-conception defense. See Lacks Indus., 322 F.3d at 1350 (holding that internal company documents from the alleged prior inventor's employer, without independent corroboration, were insufficient to establish prior conception); Medichem, 437 F.3d at 1170–71 (same); Price v. Symsek, 988 F.2d at 1194–95 (holding that corroboration from a source independent of the alleged inventor is required). Summary judgment is warranted on this independent basis.

4. Application of the Rule of Reason to Lumicore's Evidence

Even under the Federal Circuit's flexible rule-of-reason analysis, Lumicore's evidence of prior conception is legally insufficient. Applying the factors set forth in Kestrel Partners LLC, 135 F.3d at 1461:

(a) Relationship between the corroborating evidence and the critical facts. The critical fact that must be corroborated is the date on which Lumicore engineers allegedly conceived of the specific polarization-diverse grating coupler claimed in the '015 Patent. The only evidence linking conception to a specific date is Lumicore's own internal documents and employee testimony — all of which emanate from Lumicore itself, an interested party. There is no evidence from any independent source that connects the alleged conception to any date, let alone a date prior to April 7, 2017.

(b) Whether the corroborating evidence is from an interested party. All of Lumicore's evidence — every document, every deposition witness, every interrogatory response — comes from Lumicore or its current or former employees. Lumicore is the defendant in this action, accused of infringing the very patent it seeks to invalidate. Its employees have a direct financial interest in the outcome. This factor weighs decisively against a finding of adequate corroboration.

To be clear, OWS acknowledges that Melissa Chen, a former Lumicore engineer now employed at Veridian Photonics, Inc., has been subpoenaed (January 22, 2025) as a fact witness in this litigation. However, Ms. Chen's anticipated testimony relates to Lumicore's awareness of OWS's patents during the design phase of the LumiLink 400G-ZR+ product — a topic relevant to OWS's willful infringement claim — not to corroboration of Lumicore's alleged prior conception of the '015 Patent's claimed invention. (Schultz Decl. ¶ 39.) Lumicore has not identified Ms. Chen as a corroborating witness for its prior-conception defense in its discovery responses, and her subpoena does not encompass testimony on that topic. (Id.)

(c) Extent to which the testimony is supported by independent evidence. There is no independent evidence supporting Lumicore's claim of prior conception. No external records, no third-party disclosures, no contemporaneous publications, no foundry interactions, no patent applications, no conference presentations — nothing. The testimony of Lumicore's CTO, Dr. Michaud, is vague and non-specific as to dates. The 30(b)(6) designee was unable to identify any corroborating source. This factor weighs decisively against a finding of adequate corroboration.

(d) Specificity and clarity of the corroborating evidence. The pre-April 2017 documents are vague and do not specifically disclose the claimed polarization-diverse grating coupler. They address only general photonic IC design concepts. The post-April 2017 documents, while more specific in their references to polarization-diverse grating coupler concepts, are untimely because they post-date the priority date. There is thus no temporally relevant evidence that is both specific to the claimed invention and from an independent source. This factor, too, weighs decisively against a finding of adequate corroboration.

In sum, every factor of the rule-of-reason analysis points in the same direction: Lumicore's evidence of prior conception is legally insufficient. No reasonable jury could find, by clear and convincing evidence, that Lumicore's alleged prior conception is adequately corroborated.

5. The Interested-Party Problem Is Compounded by Lumicore's Litigation Posture

The concerns animating the corroboration requirement are heightened in this case by the magnitude of Lumicore's financial interest in invalidating the '015 Patent. Lumicore is the defendant accused of infringing the '015 Patent with its two highest-revenue silicon photonic transceiver products: the LumiLink 800G-DR8 (FY 2023 revenue: $128.4 million) and the LumiEdge 1600G-LR (FY 2023 revenue: $41.7 million). Together, these products generated combined FY 2023 revenue of approximately $170.1 million. (Lumicore financial data produced in discovery.)

Lumicore's market capitalization at the time of the filing of the Complaint was approximately $3.4 billion (91.8 million shares outstanding at approximately $37.00 per share). A finding of infringement and an award of damages on the accused products could have a material impact on Lumicore's financial position, earnings, and stock price. This financial exposure creates a powerful incentive to marshal every available defense — including, as the Federal Circuit has recognized, the temptation to "generate or recharacterize" internal documents as evidence of prior conception. See Singh, 222 F.3d at 1367.

The corroboration requirement exists precisely to guard against this risk. Where, as here, the only evidence of prior conception consists of internal documents authored by employees of a defendant with billions of dollars at stake, and where no independent evidence of any kind corroborates the alleged conception, the corroboration requirement is not merely unsatisfied — it is starkly absent. Summary judgment is the appropriate remedy.

C. Lumicore Cannot Raise a Genuine Dispute of Material Fact

1. Lumicore's Burden Is Clear and Convincing Evidence

As the Supreme Court confirmed in Kestrel Partners LLC v. i4i Ltd. Partnership, 564 U.S. 91, 95 (2011), a defense of patent invalidity must be proven by clear and convincing evidence. This burden applies at trial, but it also informs the summary judgment standard: to survive summary judgment, Lumicore must present evidence from which a reasonable jury could find, by clear and convincing evidence, that Lumicore conceived of the claimed invention before April 7, 2017, and that its conception is adequately corroborated. See Crowne Albany Industries v. Barr Labs., Inc., 251 F.3d 955, 962 (Fed. Cir. 2001) (noting that the clear-and-convincing-evidence standard "must be taken into account" on summary judgment).

Lumicore cannot meet this threshold for two independent reasons:

First, the undisputed record shows that Lumicore's documents disclosing the specific claimed invention post-date the April 7, 2017 priority date. A reasonable jury could not find, by any standard of proof — let alone clear and convincing evidence — that documents dated May 2017 and later establish conception prior to April 7, 2017.

Second, even if there were a timing dispute, the undisputed record shows that Lumicore's evidence of prior conception is entirely uncorroborated. A reasonable jury could not find, by clear and convincing evidence, that prior conception is established where the sole evidence consists of internal documents from interested-party employees with no independent corroboration whatsoever.

Either ground is independently sufficient to support summary judgment. Together, they make an overwhelming case.

2. No Expert Opinion Supports Lumicore's Position

Lumicore's technical and validity expert, Dr. Rajesh Sundaram, a Professor of Electrical and Computer Engineering at Pacific Western University, has offered opinions in support of Lumicore's invalidity contentions. With respect to the prior-conception defense, Dr. Sundaram has relied on the same uncorroborated internal Lumicore documents discussed above. (Schultz Decl. ¶ 40.)

Dr. Sundaram's reliance on uncorroborated internal documents from an interested party does not cure the legal deficiency in Lumicore's evidence. An expert cannot transform legally insufficient evidence into sufficient evidence merely by opining that the evidence shows what the interested party claims it shows. See Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 595 (1993) (expert opinions must be based on reliable data and methodology). OWS has separately filed a motion pursuant to Daubert to exclude certain of Dr. Sundaram's opinions, including his opinion on prior conception, which is due for briefing by November 1, 2025.

Moreover, Dr. Sundaram's analysis fails to account for the critical differences between the general photonic integrated circuit design concepts reflected in Lumicore's pre-April 2017 documents and the specific polarization-diverse grating coupler invention claimed in the '015 Patent. His opinion conflates general PIC design knowledge — common in the field as of 2016 — with the specific inventive contribution of the '015 Patent, which involves a particular grating coupler architecture with specific structural and functional features. This analytical gap further undermines the reliability of his opinion and confirms that it cannot create a genuine dispute of material fact sufficient to defeat summary judgment.

3. Eliminating This Defense Will Streamline Trial

Granting this Motion will serve the interests of judicial economy and trial efficiency. Trial in this action is set for February 2, 2026, with an estimated duration of seven to ten days before a jury. The invalidity portion of the case is expected to be a significant component of the trial, involving multiple defenses across multiple patents.

Eliminating the prior-conception defense with respect to the '015 Patent will simplify the invalidity phase of trial by removing a legally meritless defense that would otherwise require the presentation of testimony regarding internal Lumicore engineering activities, the authentication and explanation of internal documents, and expert testimony on whether those documents reflect prior conception — all on a defense that fails as a matter of law. Allowing this defense to proceed to trial would waste valuable trial time, burden the jury with unnecessary complexity, and risk unfair prejudice to OWS by permitting Lumicore to present a defense that has no legal basis.

OWS emphasizes that this Motion is narrowly targeted. It addresses only Lumicore's prior-conception defense with respect to the '015 Patent. It does not seek to dispose of any other invalidity theory. Lumicore retains its other invalidity defenses, including anticipation and obviousness defenses based on prior-art references (Lumicore's invalidity contentions cite 23 prior-art references across the four asserted patents in this action). Those defenses remain for resolution on their own merits through the normal course of litigation.

By granting this Motion, the Court will eliminate a factually unsupported and legally deficient defense from the case, streamline trial preparation and presentation, and ensure that the jury's attention is focused on the genuine issues in dispute.

V. RESPONSE TO ANTICIPATED COUNTERARGUMENTS

OWS anticipates that Lumicore may advance several arguments in opposition to this Motion. Each is foreclosed by the undisputed record and governing law.

A. Lumicore May Argue Its 2016 Documents Show Generalized Conception

Lumicore may contend that its mid-2016 documents reflect the genesis of the polarization-diverse grating coupler concept and that conception is a gradual process that begins with generalized ideas. This argument misapprehends the law of conception.

Conception requires "a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice." Hybritech, 802 F.2d at 1376. It is not sufficient to show the formation of a general concept or a vague aspiration to develop a particular type of technology. The prior art must demonstrate that the alleged inventor formed a "definite and permanent idea" of the complete claimed invention — that is, an idea encompassing every limitation of the asserted claims. Burroughs Wellcome, 40 F.3d at 1228.

Lumicore's mid-2016 documents describe general photonic integrated circuit design concepts — generic waveguide layouts, basic fiber-to-chip coupling strategies (including edge coupling and simple vertical grating coupling), and high-level transceiver system block diagrams. They do not contain any reference to a polarization-diverse grating coupler. They do not describe a two-dimensional grating structure. They do not disclose a polarization-splitting element. They do not address the simultaneous coupling of TE and TM modes. They do not disclose any of the specific structural or functional features that distinguish the invention claimed in the '015 Patent from the general state of the art in silicon photonics as of 2016.

Dr. Ashford's declaration provides a detailed, element-by-element comparison of each of the pre-April 2017 Lumicore documents against each limitation of the asserted claims. (Ashford Decl. ¶¶ 30–48.) This analysis demonstrates, for each claim limitation, that the pre-April 2017 documents lack the required disclosure. For example, independent Claim 1 of the '015 Patent recites, inter alia, "a polarization-diverse grating coupler comprising a two-dimensional grating pattern configured to simultaneously couple light of a first polarization state into a first waveguide and light of a second polarization state, orthogonal to the first, into a second waveguide." (Ex. A ('015 Patent, col. 14, ll. 22–28).) Not a single Lumicore document pre-dating April 7, 2017 discloses a two-dimensional grating pattern, let alone one configured for simultaneous coupling of orthogonal polarization states. (Ashford Decl. ¶¶ 35–42.)

Generalized PIC design concepts are not the specific polarization-diverse grating coupler claimed in Claims 1, 5, 8, 12, and 16 of the '015 Patent. The law requires conception of the complete and operative invention, and Lumicore's 2016 documents fall far short of that standard.

B. Lumicore May Argue Corroboration Is a Fact Question for the Jury

Lumicore may contend that the sufficiency of corroboration is inherently a factual question that should be submitted to the jury and that summary judgment is therefore inappropriate. While it is true that the sufficiency of corroboration can present factual questions in some cases, the Federal Circuit has squarely held that summary judgment is appropriate where the record, viewed in the light most favorable to the non-movant, reveals no genuine dispute. Cooper v. Goldfarb, 154 F.3d 1321, 1330 (Fed. Cir. 1998) ("When the evidence points only to one reasonable conclusion, the issue of corroboration may be decided as a matter of law.").

Here, the record does not present a close question or a dispute requiring jury resolution. There is no independent corroborating evidence at all — none. No third-party witness. No external publication. No patent application. No vendor or foundry communication. No conference presentation. No customer disclosure. No filing of any kind. The question is not whether the corroborating evidence is sufficient; the question is whether the complete absence of corroborating evidence creates a genuine dispute. It does not. No reasonable jury could find, by clear and convincing evidence, that Lumicore's prior conception is adequately corroborated when the only evidence consists of internal documents from interested-party employees and there is literally no independent corroboration from any source.

The Federal Circuit's decision in Lacks Industries is directly on point. In that case, the court affirmed summary judgment against a prior-conception defense where the alleged prior inventor relied on internal company documents and employee testimony without independent corroboration. 322 F.3d at 1350. The court held that "internal company documents, standing alone, are insufficient to corroborate a claim of prior conception when those documents are generated by employees of a party to the litigation." Id. The same principle governs here.

C. Lumicore May Argue That Employee Testimony Is Self-Corroborating

Lumicore may attempt to argue that the consistency of multiple Lumicore employees' testimony regarding the alleged prior conception, taken together with the internal documents, constitutes adequate corroboration. This argument has been squarely rejected by the Federal Circuit.

"Multiple interested employees from the same employer testifying consistently does not constitute independent corroboration." Lacks Indus., 322 F.3d at 1350; see also Medichem, 437 F.3d at 1170–71 (rejecting the argument that "cumulative testimony from multiple interested witnesses" satisfies the corroboration requirement). The entire point of the corroboration requirement is that interested-party evidence — whether from one employee or ten — is inherently suspect and requires verification from an independent source. Lumicore cannot bootstrap the testimony of its own employees into corroboration by multiplying the number of interested witnesses.

D. Lumicore May Invoke Its Separate Invalidity Contentions Based on Prior Art

Finally, Lumicore may argue that its broader invalidity contentions — which include anticipation and obviousness defenses based on 23 cited prior-art references across the four patents in suit — somehow bear on the viability of its prior-conception defense. They do not.

This Motion does not address, and does not seek to dispose of, Lumicore's invalidity contentions based on prior-art references. Those defenses stand on their own evidentiary footing and will be addressed through the normal course of discovery, expert proceedings, and, if necessary, trial. OWS seeks only to dispose of the distinct prior-conception defense for the '015 Patent — a defense that fails as a matter of law for the reasons set forth above. The existence of other invalidity defenses does not rescue a defense that is legally untenable on the undisputed record.

VI. EVIDENTIARY SUPPORT

In support of this Motion, OWS files concurrently the following declarations and exhibits:

1. Declaration of Wendy Schultz — Authenticating and cataloging Lumicore's internal documents relied upon in the prior-conception defense, with a date analysis demonstrating that no document disclosing the specific claimed invention pre-dates April 7, 2017; cataloging Lumicore's interrogatory responses and Rule 30(b)(6) testimony confirming the absence of any corroborating witnesses; and providing additional factual context regarding the record in this action.

2. Declaration of Dr. Caroline Ashford — Technical expert declaration opining that: (a) Provisional Application No. 62/499,117, filed April 7, 2017, provides full written-description and enablement support for each element of the asserted claims of the '015 Patent (Claims 1, 5, 8, 12, and 16); (b) Lumicore's pre-April 2017 documents do not disclose the specific claimed invention, as demonstrated by an element-by-element comparison against each limitation of the asserted claims; and (c) Lumicore's post-April 2017 documents, even if they disclose the claimed invention, are untimely because they post-date the earliest effective priority date.

3. Declaration of Dr. Jian-Wei Huang — Inventor declaration confirming that the conception of the polarization-diverse grating coupler invention occurred prior to the April 7, 2017 filing of Provisional Application No. 62/499,117 and was fully disclosed therein.

4. Exhibit A: U.S. Patent No. 11,402,015 (the '015 Patent) — certified copy

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S MOTION FOR PARTIAL SUMMARY JUDGMENT THAT U.S. PATENT NO. 11,402,015 IS NOT INVALID BASED ON DEFENDANT'S PRIOR-CONCEPTION DEFENSE
TABLE OF CONTENTS
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I. INTRODUCTION
Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") respectfully moves this Court, pursuant to Federal Rule of Civil Procedure 56(a), for partial summary judgment on a discrete and well-defined issue: the legal insufficiency of Defendant Lumicore Technologies, Inc.'s ("Lumicore" or "Defendant") affirmative defense that U.S. Patent No. 11,402,015 (the "'015 Patent") is invalid based on alleged prior conception by Lumicore engineers.
The '015 Patent, titled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," was filed on August 30, 2019, and issued on August 2, 2022, to OWS as assignee. Critically, the '015 Patent claims priority to Provisional Application No. 62/499,117, filed on April 7, 2017. That filing date — April 7, 2017 — is the earliest effective priority date of the '015 Patent and establishes the temporal benchmark against which any prior-conception defense must be measured.
Lumicore's Patent Rule 3-3 Invalidity Contentions, served on October 14, 2024 (D.E. 36), assert — among other invalidity defenses — that certain internal Lumicore design documents dated 2016–2017 demonstrate prior conception by Lumicore engineers of the inventions claimed in the '015 Patent, thereby rendering the patent invalid. This defense is legally untenable for two independent reasons, each of which is sufficient, standing alone, to warrant summary judgment.
First, the internal documents on which Lumicore relies — to the extent they disclose the specific polarization-diverse grating coupler invention claimed in the '015 Patent — are dated no earlier than May 2017. Every one of these documents post-dates the '015 Patent's earliest effective priority date of April 7, 2017. Lumicore's earlier documents (from mid-2016 through early 2017) address only generalized photonic integrated circuit design concepts and do not disclose the specific structural and functional features of the polarization-diverse grating coupler claimed in the asserted claims. As a matter of law, documents that post-date the priority date of the patent at issue cannot establish prior conception, and documents that pre-date the priority date but fail to disclose the claimed invention are legally irrelevant.
Second, even if certain of Lumicore's documents were deemed to pre-date the April 7, 2017 priority date and were somehow construed to disclose the claimed invention — which they do not — Lumicore's evidence of prior conception is fatally uncorroborated. The Federal Circuit has long required that a party asserting prior conception must corroborate the alleged conception through evidence from a source independent of the alleged prior inventor. Here, every document Lumicore cites was authored by Lumicore employees — interested parties in this litigation — and Lumicore has not identified any independent witness, third-party communication, publication, or other external evidence to corroborate the alleged conception dates or inventive contributions. The complete absence of any corroborating evidence is dispositive.
The stakes are substantial. The '015 Patent is asserted against Lumicore's LumiLink 800G-DR8 and LumiEdge 1600G-LR products, which generated combined fiscal year 2023 revenues of approximately $170.1 million ($128.4 million and $41.7 million, respectively). OWS has asserted Claims 1, 5, 8, 12, and 16 of the '015 Patent against these products. Lumicore's prior-conception defense, if permitted to proceed to trial, would inject an unfounded and legally deficient defense into the proceedings, wasting trial time, confusing the jury, and prejudicing OWS.
Accordingly, OWS respectfully requests that the Court enter an order granting partial summary judgment, holding that Lumicore's prior-conception defense to the '015 Patent fails as a matter of law, and precluding Lumicore from presenting this defense at trial.
II. STATEMENT OF UNDISPUTED MATERIAL FACTS
Pursuant to Local Rule CV-56(a), OWS submits the following statement of undisputed material facts. Each fact is supported by citations to the record and, where applicable, to the supporting declarations and exhibits filed concurrently with this Motion.
A. The '015 Patent and Its Priority Chain
1. The '015 Patent (U.S. Patent No. 11,402,015), titled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," was filed as Application No. 16/555,814 on August 30, 2019, and issued on August 2, 2022, to Optiwave Semiconductor Corp. as assignee. (Complaint Ex. D, D.E. 1-4; Ex. A hereto ('015 Patent face page).)
2. The '015 Patent expressly claims the benefit of U.S. Provisional Application No. 62/499,117, filed on April 7, 2017, pursuant to 35 U.S.C. § 119(e). (Ex. A ('015 Patent, Related Applications section); Ex. B (Provisional Application No. 62/499,117).)
3. A related patent in the OWS portfolio, U.S. Patent No. 10,891,193 (the "'193 Patent"), titled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate," also claims priority to the same Provisional Application No. 62/499,117 (filed April 7, 2017). ('193 Patent face page; prosecution history excerpts at Ex. H.)
4. The named inventors of the '015 Patent are Dr. Jian-Wei Huang, Chief Technology Officer of OWS, and Dr. Nikolai Petrov, Vice President of Engineering, Photonics Division, of OWS. (Ex. A ('015 Patent face page).)
5. The '015 Patent was prosecuted before the United States Patent and Trademark Office by Dr. Martin Chu of Cascade IP Advisors, LLC, located at 1550 Crystal Drive, Suite 600, Arlington, Virginia 22202. (Ex. H (Prosecution history, attorney of record).)
6. The earliest effective priority date of the '015 Patent is April 7, 2017, which is the filing date of Provisional Application No. 62/499,117. OWS's technical expert, Dr. Caroline Ashford, has opined that the Provisional Application provides full written-description and enablement support for each element of the asserted claims, including Claims 1, 5, 8, 12, and 16. (Ex. A; Ex. B; Ex. H; Declaration of Dr. Caroline Ashford ("Ashford Decl.") ¶¶ 14–29.)
B. OWS's Chain of Title
7. OWS was the original assignee of the '015 Patent and has maintained continuous ownership of the patent since the date of its filing. No assignment, transfer, license, or other conveyance has altered OWS's status as the sole owner of the '015 Patent. (USPTO Assignment Records; OWS Initial Disclosures, D.E. 32.)
8. All required maintenance fees on the '015 Patent have been paid and are current. The '015 Patent remains in force and has not been subject to any reexamination, inter partes review, or post-grant review proceeding. (USPTO Records.)
9. OWS currently holds a portfolio of 142 issued United States patents and 58 pending United States patent applications, spanning silicon photonic transceiver technology, waveguide architectures, photonic integrated circuit packaging, and related fields. (OWS Initial Disclosures, D.E. 32.)
C. Lumicore's Prior-Conception Defense
10. On October 14, 2024, Lumicore served its Patent Rule 3-3 Invalidity Contentions (D.E. 36), which assert, among other defenses, that the '015 Patent is invalid based on prior conception by Lumicore engineers. (Ex. C (Lumicore Invalidity Contentions, relevant sections on prior-conception defense).)
11. Lumicore's invalidity contentions cite internal Lumicore design documents dated 2016–2017 as the sole documentary basis for its prior-conception defense with respect to the '015 Patent. No external prior art references are cited in support of this particular defense. (Ex. C (Lumicore Invalidity Contentions, '015 Patent section).)
12. Lumicore has identified three categories of internal documents purportedly supporting its prior-conception defense: (a) engineering design notebooks maintained by Lumicore photonics engineers; (b) internal presentation slides prepared for Lumicore management and engineering team meetings; and (c) internal email correspondence among Lumicore engineers concerning photonic integrated circuit design. (Ex. C; Lumicore document productions (Ex. D).)
13. Upon careful review and cataloging of the entirety of Lumicore's document productions cited in its invalidity contentions, the internal documents produced by Lumicore and relied upon in its prior-conception defense bear dates ranging from mid-2016 through late 2017. Critically, the documents that purport to show conception of the specific polarization-diverse grating coupler structure claimed in the '015 Patent — including any reference to a polarization-splitting functionality, a two-dimensional grating structure, or the simultaneous coupling of TE and TM polarization modes — are dated no earlier than May 2017, which is after the April 7, 2017 priority date of Provisional Application No. 62/499,117. (Ex. D (Lumicore documents by Bates number, with date annotations); Declaration of Wendy Schultz ("Schultz Decl.") ¶¶ 5–18 (cataloging dates of each cited document).)
14. Lumicore's earliest documents, dated mid-2016 through early 2017, relate to general photonic integrated circuit ("PIC") design concepts — including generic waveguide layouts, basic grating architectures for fiber-to-chip coupling, and general system-level block diagrams for coherent optical transceivers. These documents do not contain any reference to a "polarization-diverse grating coupler," do not disclose any polarization-splitting element, do not describe a two-dimensional grating structure, and do not address the simultaneous coupling of TE and TM modes as recited in the asserted claims of the '015 Patent. (Ex. D; Ashford Decl. ¶¶ 30–48 (element-by-element analysis of pre-April 2017 documents).)
D. Lumicore's Failure to Corroborate Its Prior-Conception Defense
15. In its responses to OWS's Interrogatory No. 14 (seeking identification of all witnesses with knowledge of the alleged prior conception and all evidence corroborating the alleged conception), Lumicore did not identify any independent witness — i.e., any witness who is not a current or former Lumicore employee — who can corroborate the conception dates or the inventive contribution allegedly reflected in the internal documents. (Ex. G (Lumicore Interrogatory Responses); Schultz Decl. ¶¶ 19–24.)
16. During her deposition on November 19, 2024, Lumicore's Chief Technology Officer, Dr. Sandra Michaud, testified that she could not identify specific non-infringing design alternatives for the accused products. Relevant to this Motion, Dr. Michaud was unable to specifically recall when the grating coupler designs reflected in the internal documents were first conceived, stating that she had only a "general sense" that the work "was happening around 2016 or 2017" but could not pinpoint specific dates. Dr. Michaud further testified that she was not aware of any disclosure of the alleged inventive concepts to any party outside of Lumicore prior to the filing of Lumicore's own patent applications in 2018. (Ex. E (Michaud Dep. Tr. at 87:4–88:19; 112:7–113:14; 147:22–149:3).)
17. Dr. Eric Dalmqvist, Lumicore's Vice President of Product Development, who is identified in Lumicore's invalidity contentions as one of the engineers involved in the alleged prior conception, has not been deposed on this specific topic to date. Lumicore has not proffered a declaration from Dr. Dalmqvist or any other Lumicore engineer corroborating the specific dates of conception or identifying any independent corroborating evidence. (Schultz Decl. ¶ 25.)
18. Lumicore's Rule 30(b)(6) corporate designee, deposed on the topic of "the factual basis for Lumicore's invalidity contentions including its prior-conception defense," did not provide testimony corroborating the specific dates of conception and was unable to identify any corroborating witness independent of Lumicore. When asked to identify any third party to whom the alleged inventive concepts had been disclosed prior to April 7, 2017, the designee testified: "I'm not aware of any such disclosure." (Ex. F (30(b)(6) Dep. Tr. at 63:8–64:22; 71:3–72:11).)
19. The internal documents that Lumicore relies upon are authored exclusively by Lumicore employees who are interested parties in this litigation. These authors include engineers who remain employed by Lumicore and who, as employees of the defendant accused of patent infringement, have a direct financial interest in the outcome of this case. Their documentary and testimonial evidence, standing alone, cannot satisfy the well-established corroboration requirement for a prior-conception defense. (Lumicore document productions (Ex. D); legal authority discussed infra Section IV.C.)
20. No contemporaneous third-party evidence of any kind — including, without limitation, disclosures to parties outside Lumicore, academic or industry publications, customer or vendor communications, foundry design submissions, conference presentations, provisional or non-provisional patent applications, or any other external filing — corroborates Lumicore's alleged conception of the polarization-diverse grating coupler claimed in the '015 Patent prior to the April 7, 2017 priority date. (Lumicore discovery responses (Exs. F, G); Schultz Decl. ¶¶ 26–30.)
E. Background on Lumicore Technologies, Inc.
21. Lumicore Technologies, Inc. was founded in 2015 and is a Delaware corporation headquartered at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. Lumicore designs, manufactures, and sells silicon photonic transceiver products for data center and telecommunications applications. (Public records; Lumicore 10-K (FY 2023).)
22. Lumicore conducted its initial public offering on the Nasdaq Stock Market in March 2022 at an offering price of $24.00 per share. At the time of the filing of the Complaint in this action on April 22, 2024, Lumicore's share price was approximately $37.00 per share, with approximately 91.8 million shares outstanding, representing an approximate market capitalization of $3.4 billion. (Public filings; Lumicore 10-K; market data.)
23. Lumicore's Chief Executive Officer is Thomas "Tom" Kessler. Its Chief Technology Officer is Dr. Sandra Michaud. Its General Counsel is Raymond Bautista. (Public filings; discovery responses.)
F. The Accused Products
24. The '015 Patent is asserted in this action against two Lumicore products: (a) the LumiLink 800G-DR8 silicon photonic transceiver module, which was commercially launched in the first quarter of 2023 and generated fiscal year 2023 revenue of approximately $128.4 million; and (b) the LumiEdge 1600G-LR silicon photonic transceiver module, which was commercially launched in the fourth quarter of 2023 and generated fiscal year 2023 revenue of approximately $41.7 million. (Complaint, D.E. 1; OWS Infringement Contentions, D.E. 32; Lumicore financial data produced in discovery.)
25. The asserted claims of the '015 Patent include Claims 1, 5, 8, 12, and 16. OWS asserts literal infringement of Claims 1, 5, 8, and 16 and asserts infringement of Claim 12 under both literal infringement and the doctrine of equivalents. (OWS Infringement Contentions, D.E. 32.)
III. LEGAL STANDARD
A. Summary Judgment Under Federal Rule of Civil Procedure 56
A court "shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). The purpose of summary judgment is to "isolate and dispose of factually unsupported claims or defenses" and to avoid unnecessary trials on claims or defenses that cannot be sustained on the record. Celotex Corp. v. Catrett, 477 U.S. 317, 323–24 (1986).
The moving party bears the initial burden of identifying the basis for its motion and "identifying those portions of 'the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any,' which it believes demonstrate the absence of a genuine issue of material fact." Id. at 323. A genuine dispute of material fact exists only if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
Once the movant has met its initial burden, the burden shifts to the nonmoving party to "set forth specific facts showing that there is a genuine issue for trial." Id. at 250. The nonmoving party "must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). The court must view the evidence in the light most favorable to the nonmoving party, drawing all reasonable inferences in its favor. Id. at 587. However, the nonmoving party must come forward with evidence that would be sufficient to support a jury verdict in its favor; "[t]he mere existence of a scintilla of evidence" is not enough. Anderson, 477 U.S. at 252.
Partial summary judgment on a discrete defense is both appropriate and encouraged where the defense fails as a matter of law on the undisputed record. Fed. R. Civ. P. 56(a), (g); see also Strauss v. Credit Lyonnais, S.A., 249 F.R.D. 429, 438 (E.D.N.Y. 2008) (noting that partial summary judgment promotes judicial efficiency by narrowing the issues for trial).
B. Burden of Proof on Patent Invalidity
A patent issued by the United States Patent and Trademark Office enjoys a statutory presumption of validity. 35 U.S.C. § 282(a) ("A patent shall be presumed valid."). The party challenging the validity of a patent bears the burden of proving invalidity by clear and convincing evidence. Kestrel Partners LLC v. i4i Ltd. P'ship, 564 U.S. 91, 95 (2011) ("We consider whether § 282 requires an invalidity defense to be proved by clear and convincing evidence. We hold that it does.").
The clear-and-convincing-evidence standard is "a heavy burden" that requires evidence that "place[s] in the ultimate factfinder an abiding conviction that the truth of [the] factual contentions [is] 'highly probable.'" Colorado v. New Mexico, 467 U.S. 310, 316 (1984) (quoted in Ashbury Holdings, 564 U.S. at 100). This heightened standard reflects the deference owed to the expertise of the Patent Office examiners who reviewed and allowed the patent. Ashbury Holdings, 564 U.S. at 111.
As applied here, Lumicore bears the burden of proving by clear and convincing evidence that it conceived of the inventions claimed in the '015 Patent prior to OWS's earliest effective priority date of April 7, 2017. If Lumicore cannot present evidence from which a reasonable jury could find prior conception by clear and convincing evidence, summary judgment is appropriate.
C. Legal Requirements for Prior Conception
Conception is "the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice." Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986) (internal quotation marks omitted). Conception is complete only when "the idea is so clearly defined in the inventor's mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation." Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994).
A party asserting prior conception must demonstrate that every element of the claimed invention was conceived before the asserted priority date. Id. Conception of only a portion of the claimed invention, or of a generalized concept that does not encompass every claim limitation, is insufficient. Id.; see also Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985) ("Conception must encompass all limitations of the claimed invention, including . . . every element and every limitation of the claim.").
Critically, the law imposes a stringent corroboration requirement on claims of prior conception. "An alleged conception must be proved by corroborating evidence, not merely by the testimony of the alleged prior inventor." Price v. Symsek, 988 F.2d 1187, 1194–95 (Fed. Cir. 1993). The rule of corroboration requires evidence from a source independent of the alleged inventor or inventors. Id. This requirement "arose out of a concern that inventors testifying in patent infringement or interference cases would be tempted to remember facts favorable to their case, and the rule was created as a guard against this natural temptation." Singh v. Brake, 222 F.3d 1362, 1367 (Fed. Cir. 2000).
The corroboration requirement applies with particular force where the alleged prior inventor has a financial or litigation interest in the outcome. Reese v. Hurst, 661 F.2d 1222, 1225–26 (C.C.P.A. 1981). This principle extends to employees of a party to the litigation, whose testimony and documentary evidence are inherently suspect due to their employer's interest. Lacks Indus., Inc. v. McKechnie Vehicle Components USA, Inc., 322 F.3d 1335, 1350 (Fed. Cir. 2003).
Internal company documents authored by interested-party employees, standing alone, do not satisfy the corroboration requirement. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1170–71 (Fed. Cir. 2006) (holding that internal laboratory notebooks and records of an interested party were insufficient to corroborate prior conception absent independent evidence); Lacks Indus., 322 F.3d at 1350 (same). The rationale is straightforward: internal documents can be created, altered, or selectively preserved by the interested party, and they do not bear the indicia of reliability that would attend contemporaneous disclosures to third parties, publications, or other external evidence.
IV. ARGUMENT
A. Lumicore's Internal Documents Post-Date the '015 Patent's Priority Date
1. The '015 Patent's Earliest Effective Priority Date Is April 7, 2017
Under 35 U.S.C. § 119(e), a nonprovisional patent application that claims the benefit of a provisional application is entitled to the filing date of the provisional application for all claims that are supported by the provisional application's disclosure. The '015 Patent expressly claims the benefit of Provisional Application No. 62/499,117, filed on April 7, 2017. (Ex. A ('015 Patent, Related Applications section); Ex. B (Provisional Application).) Accordingly, the earliest effective filing date of the '015 Patent is April 7, 2017, for all claims supported by the Provisional Application's disclosure.
The prosecution history of the '015 Patent confirms that the Provisional Application was cited as the basis for priority throughout prosecution, and the patent examiner did not challenge the entitlement to the April 7, 2017 priority date. (Ex. H (Prosecution history excerpts).) Moreover, Lumicore has never challenged OWS's entitlement to the April 7, 2017 priority date in its invalidity contentions or otherwise. (Ex. C (Lumicore Invalidity Contentions).)
OWS's technical expert, Dr. Caroline Ashford — a Professor of Electrical Engineering and Photonics at the Northfield Institute of Technology, with over twenty-five years of experience in silicon photonics, grating coupler design, and photonic integrated circuit architectures — has conducted a detailed analysis of the Provisional Application and has opined that it provides full written-description and enablement support for each element of each of the asserted claims of the '015 Patent, including Claims 1, 5, 8, 12, and 16. (Ashford Decl. ¶¶ 14–29.) Dr. Ashford's analysis demonstrates that the Provisional Application discloses, inter alia: the polarization-diverse grating coupler structure; the two-dimensional grating pattern with specified periodicity; the polarization-splitting element; the simultaneous coupling of TE and TM polarization modes into separate waveguide paths; and the integration of the grating coupler within a silicon photonic transceiver architecture. (Id.)
In short, the April 7, 2017 filing date of the Provisional Application is the earliest effective priority date of the '015 Patent, and the asserted claims are fully supported by the Provisional Application's disclosure. Any evidence of prior conception must therefore pre-date April 7, 2017.
2. Lumicore's Documents Purporting to Show the Claimed Invention Are Dated After April 7, 2017
The undisputed record demonstrates that every Lumicore internal document that purports to disclose the specific polarization-diverse grating coupler structure claimed in the '015 Patent is dated after the April 7, 2017 priority date. A document-by-document analysis of Lumicore's cited references confirms this conclusion:
Engineering Design Notebooks. Lumicore's engineering design notebook entries reflecting a "polarization-diverse grating coupler" concept — the first documents in Lumicore's productions that use this term or describe a functionally equivalent structure — are dated May 14, 2017 and later. (Ex. D (LUMI-00034517 through LUMI-00034542, dated May 14, 2017; LUMI-00034601 through LUMI-00034618, dated May 22, 2017; LUMI-00035127 through LUMI-00035149, dated June 8, 2017).) Each of these entries post-dates the April 7, 2017 priority date by more than one month.
Internal Presentation Slides. Lumicore's internal presentation slides showing a grating coupler design with polarization-diversity features are dated June 20, 2017. (Ex. D (LUMI-00042891 through LUMI-00042919).) The slide deck is titled "Next-Gen Coherent Transceiver Design Review — Grating Coupler Options" and includes, for the first time in Lumicore's productions, a two-dimensional grating coupler schematic with a polarization-splitting element. This document post-dates the April 7, 2017 priority date by more than two months.
Email Correspondence. Lumicore's email correspondence discussing the specific polarization-diverse coupler architecture is dated July 11, 2017 through August 3, 2017. (Ex. D (LUMI-00051203 through LUMI-00051209, dated July 11, 2017; LUMI-00051314 through LUMI-00051318, dated July 28, 2017; LUMI-00051402 through LUMI-00051411, dated August 3, 2017).) These emails contain the first Lumicore references to simultaneous TE/TM mode coupling in a grating coupler context. All of these communications post-date the April 7, 2017 priority date by at least three months.
The Declaration of Wendy Schultz, filed concurrently herewith, provides a comprehensive catalog of each Lumicore document cited in Lumicore's invalidity contentions in support of its prior-conception defense for the '015 Patent. (Schultz Decl. ¶¶ 5–18.) Ms. Schultz's declaration identifies each document by Bates number, date, author(s), and subject matter, and confirms that no document disclosing the specific polarization-diverse grating coupler claimed in the '015 Patent pre-dates April 7, 2017. (Id.)
Because every document disclosing the claimed invention post-dates the priority date, Lumicore's prior-conception defense fails on its face. As a matter of law, a party cannot establish prior conception of a patented invention by relying on documents that are dated after the patent's earliest effective priority date.
3. Lumicore's Pre-Priority-Date Documents (Mid-2016) Do Not Disclose the Claimed Invention
Lumicore's document productions do include certain documents that pre-date the April 7, 2017 priority date. Specifically, documents dated from mid-2016 through early 2017 appear in Lumicore's invalidity contentions. However, a careful analysis of these documents reveals that they relate to general photonic integrated circuit ("PIC") design concepts that bear no meaningful resemblance to the specific polarization-diverse grating coupler invention claimed in the '015 Patent.
The pre-April 2017 documents include: (a) generic waveguide layout drawings and block diagrams for a coherent optical transceiver (LUMI-00012004 through LUMI-00012089, dated June–September 2016); (b) a memorandum discussing general fiber-to-chip coupling strategies, including edge coupling and simple vertical grating coupling, but without any reference to polarization diversity (LUMI-00015678 through LUMI-00015694, dated November 2016); and (c) brainstorming notes for "next-generation transceiver features" that reference "improved coupling efficiency" and "multi-mode considerations" at a high level of generality, without any disclosure of a polarization-diverse grating coupler, a two-dimensional grating structure, a polarization-splitting element, or simultaneous TE/TM mode coupling (LUMI-00017802 through LUMI-00017814, dated January–February 2017). (Ex. D; Ashford Decl. ¶¶ 30–48.)
The claim term "polarization-diverse grating coupler" is central to the asserted claims. The parties have proposed competing constructions for this term:
• OWS's proposed construction: "a grating coupler capable of coupling light of two orthogonal polarization states."
• Lumicore's proposed construction: "a two-dimensional grating coupler with a polarization-splitting element that simultaneously couples TE and TM modes."
Under either party's construction, none of Lumicore's pre-April 2017 documents discloses a polarization-diverse grating coupler. OWS's broader construction requires, at minimum, a grating coupler designed to handle two orthogonal polarization states — a feature entirely absent from Lumicore's 2016 documents, which address only basic, single-polarization coupling strategies. Lumicore's own narrower construction is even more demanding, requiring a two-dimensional grating coupler with a polarization-splitting element that simultaneously couples TE and TM modes. The 2016 documents do not contain any disclosure of a two-dimensional grating structure, any polarization-splitting element, or any simultaneous coupling of TE and TM modes.
Dr. Ashford has conducted an element-by-element comparison of each of Lumicore's pre-April 2017 documents against every limitation of the asserted claims. (Ashford Decl. ¶¶ 30–48.) Her analysis confirms that none of the pre-April 2017 documents discloses: (i) a grating coupler with polarization-diversity functionality; (ii) a two-dimensional grating pattern with the specified periodicity; (iii) a polarization-splitting element; (iv) the simultaneous coupling of TE and TM polarization modes into separate waveguide paths; or (v) the integration of a polarization-diverse grating coupler within the claimed silicon photonic transceiver architecture. (Id.) Dr. Ashford concludes that the pre-April 2017 documents "reflect only general, high-level PIC design concepts that are common knowledge in the field and that do not approach the specific and complete conception of the polarization-diverse grating coupler invention claimed in the '015 Patent." (Ashford Decl. ¶ 48.)
In short, Lumicore's pre-priority-date documents do not and cannot establish conception of the claimed invention. They are too general, too incomplete, and too far removed from the specific structural and functional features of the polarization-diverse grating coupler to satisfy the legal standard for conception.
4. Even Under Lumicore's Own Claim Construction, the Defense Fails on Timing
As noted above, Lumicore has proposed a narrower construction for the term "polarization-diverse grating coupler," requiring "a two-dimensional grating coupler with a polarization-splitting element that simultaneously couples TE and TM modes." Under Lumicore's own construction, the threshold for establishing conception is higher — not lower — because the alleged prior inventor must have formed a definite and permanent idea of a more specifically defined invention.
The record is entirely devoid of any Lumicore document pre-dating April 7, 2017 that discloses a two-dimensional grating coupler with a polarization-splitting element simultaneously coupling TE and TM modes. The first Lumicore document that can even arguably be read to describe such a structure is the engineering notebook entry dated May 14, 2017 (LUMI-00034517), which is more than five weeks after the priority date. (Ex. D; Ashford Decl. ¶ 49.)
Lumicore cannot have it both ways: it cannot advocate for a narrow claim construction to limit the scope of infringement while simultaneously arguing that generalized 2016 design documents — which fail to disclose the very features its own construction requires — establish prior conception. Regardless of which claim construction the Court ultimately adopts, Lumicore's prior-conception defense fails on timing grounds.
B. Lumicore's Prior-Conception Evidence Is Fatally Uncorroborated
Even if Lumicore could somehow establish that its documents pre-date the April 7, 2017 priority date and disclose the claimed invention — which, as demonstrated above, it cannot — Lumicore's prior-conception defense would still fail as a matter of law because its evidence is entirely uncorroborated. This independently dispositive deficiency warrants summary judgment.
1. The Corroboration Rule and Its Rationale
The Federal Circuit has long required that a party asserting prior conception must corroborate its claim through evidence independent of the alleged prior inventor. Singh v. Brake, 222 F.3d 1362, 1367 (Fed. Cir. 2000); Price v. Symsek, 988 F.2d 1187, 1194–95 (Fed. Cir. 1993). The corroboration requirement is "not a mere formality" but a "substantive requirement" rooted in the recognition that "the temptation of a person interested in the outcome of a proceeding to remember facts favorable to himself . . . is a well-recognized psychological phenomenon." Singh, 222 F.3d at 1367.
The corroboration requirement applies not only to oral testimony but also to documentary evidence when the documents at issue are generated by the alleged prior inventor or by the employer of the alleged prior inventor — that is, by an interested party in the litigation. Lacks Indus., Inc. v. McKechnie Vehicle Components USA, Inc., 322 F.3d 1335, 1350 (Fed. Cir. 2003); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1170–71 (Fed. Cir. 2006). This extension of the corroboration rule reflects the reality that internal company documents can be created, altered, backdated, or selectively preserved and produced in litigation, and that they lack the inherent reliability of documents disclosed to independent third parties.
The Federal Circuit applies a "rule of reason" analysis to evaluate the sufficiency of corroboration, examining "the totality of the circumstances" to determine whether the evidence is sufficient to establish prior conception. Kestrel Partners LLC, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1461 (Fed. Cir. 1998). Under this framework, the court considers: (a) the relationship between the corroborating evidence and the critical facts; (b) whether the corroborating evidence is from an interested party; (c) the extent to which the testimony is supported by independent evidence; and (d) the specificity and clarity of the corroborating evidence. Id. Even under this flexible standard, however, "self-serving documents from interested parties do not alone suffice" to establish corroboration. Id.; Lacks Indus., 322 F.3d at 1350.
2. Lumicore's Documents Are Authored Exclusively by Interested-Party Employees
Every document that Lumicore cites in support of its prior-conception defense was authored by employees of Lumicore Technologies, Inc. — the Defendant in this action. These authors include photonics engineers, design team leads, and managers within Lumicore's engineering organization, many of whom remain employed by Lumicore to this day. (Ex. D; Schultz Decl. ¶¶ 31–37.)
Lumicore is the defendant accused of infringing the '015 Patent. Its employees are interested parties whose documentary and testimonial evidence requires independent corroboration under the well-settled law of the Federal Circuit. The engineering notebooks were maintained by Lumicore engineers in the ordinary course of their employment at Lumicore. The presentation slides were prepared by and for Lumicore employees. The email correspondence was exchanged among Lumicore employees using Lumicore's internal email system. (Schultz Decl. ¶¶ 31–37.)
At no point were any of these documents shared with, verified by, disclosed to, or reviewed by any party outside of Lumicore. (Id. ¶ 38.) The documents are purely internal to the company that is now asserting them as evidence of prior conception in defense of a patent infringement claim. This is precisely the type of evidence that the corroboration requirement is designed to guard against.
3. Lumicore Has Failed to Identify Any Corroborating Witness or Independent Evidence
The absence of corroborating evidence in this case is not a matter of degree — it is total. Lumicore has failed to identify or produce any evidence, from any source independent of Lumicore and its employees, that corroborates its alleged prior conception of the invention claimed in the '015 Patent.
Interrogatory Responses. In response to OWS's Interrogatory No. 14, which specifically requested identification of "all persons with knowledge of facts supporting Lumicore's prior-conception defense, including any witness who can corroborate the dates of alleged conception and the inventive contributions reflected in the cited documents," Lumicore identified only current and former Lumicore employees. (Ex. G.) Lumicore did not identify any independent corroborating witness.
30(b)(6) Deposition. Lumicore's Rule 30(b)(6) corporate designee, deposed on the topic of the factual basis for Lumicore's invalidity contentions, was unable to identify any third party to whom the alleged inventive concepts had been disclosed prior to April 7, 2017. When asked directly, the designee testified: "I'm not aware of any such disclosure." (Ex. F (30(b)(6) Dep. Tr. at 63:8–64:22).) The designee further acknowledged that Lumicore had not identified any external publications, patent filings, conference presentations, or vendor communications that corroborated the alleged conception dates. (Id. at 71:3–72:11.)
Dr. Michaud's Deposition. Lumicore's CTO, Dr. Sandra Michaud, testified at her deposition on November 19, 2024 that she could not specifically recall when the grating coupler designs reflected in the internal documents were conceived. (Ex. E (Michaud Dep. Tr. at 87:4–88:19).) Dr. Michaud testified that she had only a "general sense" that the work "was happening around 2016 or 2017" and could not provide a more specific timeframe. (Id. at 112:7–113:14.) Importantly, Dr. Michaud confirmed that she was not aware of any disclosure of the alleged inventive concepts to any party outside of Lumicore prior to Lumicore's own patent filings in 2018. (Id. at 147:22–149:3.) This testimony not only fails to provide corroboration but affirmatively confirms the absence of any external corroborating evidence.
No Declaration from Dr. Dalmqvist. Dr. Eric Dalmqvist, Lumicore's Vice President of Product Development, is identified in Lumicore's invalidity contentions as one of the engineers involved in the alleged prior conception. Despite the centrality of Dr. Dalmqvist to this defense, Lumicore has not proffered a declaration from Dr. Dalmqvist or from any other Lumicore engineer corroborating the specific dates of conception or providing any basis for independent corroboration. (Schultz Decl. ¶ 25.)
No External Evidence of Any Kind. The record is entirely devoid of any external evidence that could corroborate Lumicore's alleged prior conception. There are no publications in peer-reviewed journals or trade publications. There are no conference presentations or posters. There are no provisional or nonprovisional patent applications filed by Lumicore prior to April 7, 2017 that disclose the claimed invention. There are no communications with customers, vendors, foundries (such as silicon photonics fabrication foundries), or any other third parties reflecting the polarization-diverse grating coupler concept. There are no federal or state filings, no grant applications, no investor presentations, and no public disclosures of any kind. (Schultz Decl. ¶¶ 26–30; Lumicore discovery responses (Exs. F, G).)
This complete absence of any independent corroborating evidence is dispositive. The Federal Circuit has consistently held that uncorroborated internal documents from interested parties cannot sustain a prior-conception defense. See Lacks Indus., 322 F.3d at 1350 (holding that internal company documents from the alleged prior inventor's employer, without independent corroboration, were insufficient to establish prior conception); Medichem, 437 F.3d at 1170–71 (same); Price v. Symsek, 988 F.2d at 1194–95 (holding that corroboration from a source independent of the alleged inventor is required). Summary judgment is warranted on this independent basis.
4. Application of the Rule of Reason to Lumicore's Evidence
Even under the Federal Circuit's flexible rule-of-reason analysis, Lumicore's evidence of prior conception is legally insufficient. Applying the factors set forth in Kestrel Partners LLC, 135 F.3d at 1461:
(a) Relationship between the corroborating evidence and the critical facts. The critical fact that must be corroborated is the date on which Lumicore engineers allegedly conceived of the specific polarization-diverse grating coupler claimed in the '015 Patent. The only evidence linking conception to a specific date is Lumicore's own internal documents and employee testimony — all of which emanate from Lumicore itself, an interested party. There is no evidence from any independent source that connects the alleged conception to any date, let alone a date prior to April 7, 2017.
(b) Whether the corroborating evidence is from an interested party. All of Lumicore's evidence — every document, every deposition witness, every interrogatory response — comes from Lumicore or its current or former employees. Lumicore is the defendant in this action, accused of infringing the very patent it seeks to invalidate. Its employees have a direct financial interest in the outcome. This factor weighs decisively against a finding of adequate corroboration.
To be clear, OWS acknowledges that Melissa Chen, a former Lumicore engineer now employed at Veridian Photonics, Inc., has been subpoenaed (January 22, 2025) as a fact witness in this litigation. However, Ms. Chen's anticipated testimony relates to Lumicore's awareness of OWS's patents during the design phase of the LumiLink 400G-ZR+ product — a topic relevant to OWS's willful infringement claim — not to corroboration of Lumicore's alleged prior conception of the '015 Patent's claimed invention. (Schultz Decl. ¶ 39.) Lumicore has not identified Ms. Chen as a corroborating witness for its prior-conception defense in its discovery responses, and her subpoena does not encompass testimony on that topic. (Id.)
(c) Extent to which the testimony is supported by independent evidence. There is no independent evidence supporting Lumicore's claim of prior conception. No external records, no third-party disclosures, no contemporaneous publications, no foundry interactions, no patent applications, no conference presentations — nothing. The testimony of Lumicore's CTO, Dr. Michaud, is vague and non-specific as to dates. The 30(b)(6) designee was unable to identify any corroborating source. This factor weighs decisively against a finding of adequate corroboration.
(d) Specificity and clarity of the corroborating evidence. The pre-April 2017 documents are vague and do not specifically disclose the claimed polarization-diverse grating coupler. They address only general photonic IC design concepts. The post-April 2017 documents, while more specific in their references to polarization-diverse grating coupler concepts, are untimely because they post-date the priority date. There is thus no temporally relevant evidence that is both specific to the claimed invention and from an independent source. This factor, too, weighs decisively against a finding of adequate corroboration.
In sum, every factor of the rule-of-reason analysis points in the same direction: Lumicore's evidence of prior conception is legally insufficient. No reasonable jury could find, by clear and convincing evidence, that Lumicore's alleged prior conception is adequately corroborated.
5. The Interested-Party Problem Is Compounded by Lumicore's Litigation Posture
The concerns animating the corroboration requirement are heightened in this case by the magnitude of Lumicore's financial interest in invalidating the '015 Patent. Lumicore is the defendant accused of infringing the '015 Patent with its two highest-revenue silicon photonic transceiver products: the LumiLink 800G-DR8 (FY 2023 revenue: $128.4 million) and the LumiEdge 1600G-LR (FY 2023 revenue: $41.7 million). Together, these products generated combined FY 2023 revenue of approximately $170.1 million. (Lumicore financial data produced in discovery.)
Lumicore's market capitalization at the time of the filing of the Complaint was approximately $3.4 billion (91.8 million shares outstanding at approximately $37.00 per share). A finding of infringement and an award of damages on the accused products could have a material impact on Lumicore's financial position, earnings, and stock price. This financial exposure creates a powerful incentive to marshal every available defense — including, as the Federal Circuit has recognized, the temptation to "generate or recharacterize" internal documents as evidence of prior conception. See Singh, 222 F.3d at 1367.
The corroboration requirement exists precisely to guard against this risk. Where, as here, the only evidence of prior conception consists of internal documents authored by employees of a defendant with billions of dollars at stake, and where no independent evidence of any kind corroborates the alleged conception, the corroboration requirement is not merely unsatisfied — it is starkly absent. Summary judgment is the appropriate remedy.
C. Lumicore Cannot Raise a Genuine Dispute of Material Fact
1. Lumicore's Burden Is Clear and Convincing Evidence
As the Supreme Court confirmed in Kestrel Partners LLC v. i4i Ltd. Partnership, 564 U.S. 91, 95 (2011), a defense of patent invalidity must be proven by clear and convincing evidence. This burden applies at trial, but it also informs the summary judgment standard: to survive summary judgment, Lumicore must present evidence from which a reasonable jury could find, by clear and convincing evidence, that Lumicore conceived of the claimed invention before April 7, 2017, and that its conception is adequately corroborated. See Crowne Albany Industries v. Barr Labs., Inc., 251 F.3d 955, 962 (Fed. Cir. 2001) (noting that the clear-and-convincing-evidence standard "must be taken into account" on summary judgment).
Lumicore cannot meet this threshold for two independent reasons:
First, the undisputed record shows that Lumicore's documents disclosing the specific claimed invention post-date the April 7, 2017 priority date. A reasonable jury could not find, by any standard of proof — let alone clear and convincing evidence — that documents dated May 2017 and later establish conception prior to April 7, 2017.
Second, even if there were a timing dispute, the undisputed record shows that Lumicore's evidence of prior conception is entirely uncorroborated. A reasonable jury could not find, by clear and convincing evidence, that prior conception is established where the sole evidence consists of internal documents from interested-party employees with no independent corroboration whatsoever.
Either ground is independently sufficient to support summary judgment. Together, they make an overwhelming case.
2. No Expert Opinion Supports Lumicore's Position
Lumicore's technical and validity expert, Dr. Rajesh Sundaram, a Professor of Electrical and Computer Engineering at Pacific Western University, has offered opinions in support of Lumicore's invalidity contentions. With respect to the prior-conception defense, Dr. Sundaram has relied on the same uncorroborated internal Lumicore documents discussed above. (Schultz Decl. ¶ 40.)
Dr. Sundaram's reliance on uncorroborated internal documents from an interested party does not cure the legal deficiency in Lumicore's evidence. An expert cannot transform legally insufficient evidence into sufficient evidence merely by opining that the evidence shows what the interested party claims it shows. See Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 595 (1993) (expert opinions must be based on reliable data and methodology). OWS has separately filed a motion pursuant to Daubert to exclude certain of Dr. Sundaram's opinions, including his opinion on prior conception, which is due for briefing by November 1, 2025.
Moreover, Dr. Sundaram's analysis fails to account for the critical differences between the general photonic integrated circuit design concepts reflected in Lumicore's pre-April 2017 documents and the specific polarization-diverse grating coupler invention claimed in the '015 Patent. His opinion conflates general PIC design knowledge — common in the field as of 2016 — with the specific inventive contribution of the '015 Patent, which involves a particular grating coupler architecture with specific structural and functional features. This analytical gap further undermines the reliability of his opinion and confirms that it cannot create a genuine dispute of material fact sufficient to defeat summary judgment.
3. Eliminating This Defense Will Streamline Trial
Granting this Motion will serve the interests of judicial economy and trial efficiency. Trial in this action is set for February 2, 2026, with an estimated duration of seven to ten days before a jury. The invalidity portion of the case is expected to be a significant component of the trial, involving multiple defenses across multiple patents.
Eliminating the prior-conception defense with respect to the '015 Patent will simplify the invalidity phase of trial by removing a legally meritless defense that would otherwise require the presentation of testimony regarding internal Lumicore engineering activities, the authentication and explanation of internal documents, and expert testimony on whether those documents reflect prior conception — all on a defense that fails as a matter of law. Allowing this defense to proceed to trial would waste valuable trial time, burden the jury with unnecessary complexity, and risk unfair prejudice to OWS by permitting Lumicore to present a defense that has no legal basis.
OWS emphasizes that this Motion is narrowly targeted. It addresses only Lumicore's prior-conception defense with respect to the '015 Patent. It does not seek to dispose of any other invalidity theory. Lumicore retains its other invalidity defenses, including anticipation and obviousness defenses based on prior-art references (Lumicore's invalidity contentions cite 23 prior-art references across the four asserted patents in this action). Those defenses remain for resolution on their own merits through the normal course of litigation.
By granting this Motion, the Court will eliminate a factually unsupported and legally deficient defense from the case, streamline trial preparation and presentation, and ensure that the jury's attention is focused on the genuine issues in dispute.
V. RESPONSE TO ANTICIPATED COUNTERARGUMENTS
OWS anticipates that Lumicore may advance several arguments in opposition to this Motion. Each is foreclosed by the undisputed record and governing law.
A. Lumicore May Argue Its 2016 Documents Show Generalized Conception
Lumicore may contend that its mid-2016 documents reflect the genesis of the polarization-diverse grating coupler concept and that conception is a gradual process that begins with generalized ideas. This argument misapprehends the law of conception.
Conception requires "a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice." Hybritech, 802 F.2d at 1376. It is not sufficient to show the formation of a general concept or a vague aspiration to develop a particular type of technology. The prior art must demonstrate that the alleged inventor formed a "definite and permanent idea" of the complete claimed invention — that is, an idea encompassing every limitation of the asserted claims. Burroughs Wellcome, 40 F.3d at 1228.
Lumicore's mid-2016 documents describe general photonic integrated circuit design concepts — generic waveguide layouts, basic fiber-to-chip coupling strategies (including edge coupling and simple vertical grating coupling), and high-level transceiver system block diagrams. They do not contain any reference to a polarization-diverse grating coupler. They do not describe a two-dimensional grating structure. They do not disclose a polarization-splitting element. They do not address the simultaneous coupling of TE and TM modes. They do not disclose any of the specific structural or functional features that distinguish the invention claimed in the '015 Patent from the general state of the art in silicon photonics as of 2016.
Dr. Ashford's declaration provides a detailed, element-by-element comparison of each of the pre-April 2017 Lumicore documents against each limitation of the asserted claims. (Ashford Decl. ¶¶ 30–48.) This analysis demonstrates, for each claim limitation, that the pre-April 2017 documents lack the required disclosure. For example, independent Claim 1 of the '015 Patent recites, inter alia, "a polarization-diverse grating coupler comprising a two-dimensional grating pattern configured to simultaneously couple light of a first polarization state into a first waveguide and light of a second polarization state, orthogonal to the first, into a second waveguide." (Ex. A ('015 Patent, col. 14, ll. 22–28).) Not a single Lumicore document pre-dating April 7, 2017 discloses a two-dimensional grating pattern, let alone one configured for simultaneous coupling of orthogonal polarization states. (Ashford Decl. ¶¶ 35–42.)
Generalized PIC design concepts are not the specific polarization-diverse grating coupler claimed in Claims 1, 5, 8, 12, and 16 of the '015 Patent. The law requires conception of the complete and operative invention, and Lumicore's 2016 documents fall far short of that standard.
B. Lumicore May Argue Corroboration Is a Fact Question for the Jury
Lumicore may contend that the sufficiency of corroboration is inherently a factual question that should be submitted to the jury and that summary judgment is therefore inappropriate. While it is true that the sufficiency of corroboration can present factual questions in some cases, the Federal Circuit has squarely held that summary judgment is appropriate where the record, viewed in the light most favorable to the non-movant, reveals no genuine dispute. Cooper v. Goldfarb, 154 F.3d 1321, 1330 (Fed. Cir. 1998) ("When the evidence points only to one reasonable conclusion, the issue of corroboration may be decided as a matter of law.").
Here, the record does not present a close question or a dispute requiring jury resolution. There is no independent corroborating evidence at all — none. No third-party witness. No external publication. No patent application. No vendor or foundry communication. No conference presentation. No customer disclosure. No filing of any kind. The question is not whether the corroborating evidence is sufficient; the question is whether the complete absence of corroborating evidence creates a genuine dispute. It does not. No reasonable jury could find, by clear and convincing evidence, that Lumicore's prior conception is adequately corroborated when the only evidence consists of internal documents from interested-party employees and there is literally no independent corroboration from any source.
The Federal Circuit's decision in Lacks Industries is directly on point. In that case, the court affirmed summary judgment against a prior-conception defense where the alleged prior inventor relied on internal company documents and employee testimony without independent corroboration. 322 F.3d at 1350. The court held that "internal company documents, standing alone, are insufficient to corroborate a claim of prior conception when those documents are generated by employees of a party to the litigation." Id. The same principle governs here.
C. Lumicore May Argue That Employee Testimony Is Self-Corroborating
Lumicore may attempt to argue that the consistency of multiple Lumicore employees' testimony regarding the alleged prior conception, taken together with the internal documents, constitutes adequate corroboration. This argument has been squarely rejected by the Federal Circuit.
"Multiple interested employees from the same employer testifying consistently does not constitute independent corroboration." Lacks Indus., 322 F.3d at 1350; see also Medichem, 437 F.3d at 1170–71 (rejecting the argument that "cumulative testimony from multiple interested witnesses" satisfies the corroboration requirement). The entire point of the corroboration requirement is that interested-party evidence — whether from one employee or ten — is inherently suspect and requires verification from an independent source. Lumicore cannot bootstrap the testimony of its own employees into corroboration by multiplying the number of interested witnesses.
D. Lumicore May Invoke Its Separate Invalidity Contentions Based on Prior Art
Finally, Lumicore may argue that its broader invalidity contentions — which include anticipation and obviousness defenses based on 23 cited prior-art references across the four patents in suit — somehow bear on the viability of its prior-conception defense. They do not.
This Motion does not address, and does not seek to dispose of, Lumicore's invalidity contentions based on prior-art references. Those defenses stand on their own evidentiary footing and will be addressed through the normal course of discovery, expert proceedings, and, if necessary, trial. OWS seeks only to dispose of the distinct prior-conception defense for the '015 Patent — a defense that fails as a matter of law for the reasons set forth above. The existence of other invalidity defenses does not rescue a defense that is legally untenable on the undisputed record.
VI. EVIDENTIARY SUPPORT
In support of this Motion, OWS files concurrently the following declarations and exhibits:
1. Declaration of Wendy Schultz — Authenticating and cataloging Lumicore's internal documents relied upon in the prior-conception defense, with a date analysis demonstrating that no document disclosing the specific claimed invention pre-dates April 7, 2017; cataloging Lumicore's interrogatory responses and Rule 30(b)(6) testimony confirming the absence of any corroborating witnesses; and providing additional factual context regarding the record in this action.
2. Declaration of Dr. Caroline Ashford — Technical expert declaration opining that: (a) Provisional Application No. 62/499,117, filed April 7, 2017, provides full written-description and enablement support for each element of the asserted claims of the '015 Patent (Claims 1, 5, 8, 12, and 16); (b) Lumicore's pre-April 2017 documents do not disclose the specific claimed invention, as demonstrated by an element-by-element comparison against each limitation of the asserted claims; and (c) Lumicore's post-April 2017 documents, even if they disclose the claimed invention, are untimely because they post-date the earliest effective priority date.
3. Declaration of Dr. Jian-Wei Huang — Inventor declaration confirming that the conception of the polarization-diverse grating coupler invention occurred prior to the April 7, 2017 filing of Provisional Application No. 62/499,117 and was fully disclosed therein.
4. Exhibit A: U.S. Patent No. 11,402,015 (the '015 Patent) — certified copy

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

TABLE OF CONTENTS

I. INTRODUCTION

II. STATEMENT OF UNDISPUTED MATERIAL FACTS

III. LEGAL STANDARD

IV. ARGUMENT

V. RESPONSE TO ANTICIPATED COUNTERARGUMENTS

VI. EVIDENTIARY SUPPORT

Record

Parties

Dates

Amounts