1014-00004 · Hawthorne Vega & Cruz LLP · Dispositive Motions & Daubert

draft-psj-562-infringement.docx DOCUMENT Litigation

64 / 168 ← → ✕

DRAFT — ATTORNEY WORK PRODUCT / PRIVILEGED AND CONFIDENTIAL

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S MOTION FOR PARTIAL SUMMARY JUDGMENT OF LITERAL INFRINGEMENT OF U.S. PATENT NO. 9,678,562 (CLAIMS 1, 4, AND 6)

Right-click to update Table of Contents

I. INTRODUCTION

Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") respectfully moves this Court for partial summary judgment under Federal Rule of Civil Procedure 56(a) on the issue of literal infringement of Claims 1, 4, and 6 of United States Patent No. 9,678,562 (the "'562 Patent") by two of Defendant Lumicore Technologies, Inc.'s ("Lumicore" or "Defendant") accused products: the LumiLink 400G-ZR+ coherent transceiver module and the LumiLink 800G-DR8 direct-detect transceiver module.

The '562 Patent, titled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks," was filed on November 22, 2014 and duly issued by the United States Patent and Trademark Office ("USPTO") on June 13, 2017. The patent was originally assigned to Solara Optics, Inc. ("Solara"), a California corporation. On June 15, 2018, OWS acquired the '562 Patent — together with eleven other patents in Solara's photonics portfolio — pursuant to an Asset Purchase Agreement between OWS and Solara Optics for a total consideration of $34.5 million. OWS is the sole and current assignee of the '562 Patent as recorded with the USPTO. All maintenance fees have been timely paid and the patent remains in full force and effect. The '562 Patent is in the same patent family as U.S. Patent No. 10,234,847 (the "'847 Patent"), which is also asserted in this action; the two patents share a continuation relationship, and the '562 Patent represents the earlier-filed, earlier-issued member of that family.

This motion addresses only the question of literal infringement of Claims 1, 4, and 6 of the '562 Patent by the two identified accused products. OWS preserves all other infringement theories — including infringement under the doctrine of equivalents — and all other claims asserted against all accused products in this action, including but not limited to Claim 11 of the '562 Patent and the claims of the '847 Patent, U.S. Patent No. 10,892,193 (the "'193 Patent"), and U.S. Patent No. 11,345,015 (the "'015 Patent").

The undisputed record evidence compels only one conclusion: every limitation of Claims 1, 4, and 6 of the '562 Patent is literally present in both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8. This conclusion is supported by three independent and mutually corroborating categories of evidence:

First, the physical teardown analysis conducted by Benchmark Semiconductor Analysis, LLC ("Benchmark"), an independent semiconductor reverse-engineering firm, identified and documented micro-channel heat-sink structures embedded within the photonic integrated circuit ("PIC") substrates of both accused products. Benchmark's lead engineer, Kevin Ng, confirmed these findings under oath during his January 7, 2025 deposition.

Second, Lumicore's own internal design documents — including engineering specifications, computer-aided design ("CAD") layout files, and fabrication run data produced during discovery — expressly describe, depict, and dimensionally characterize the very micro-channel heat-sink structures that correspond element-by-element to the limitations of the asserted claims.

Third, Lumicore's Chief Technology Officer, Dr. Sandra Michaud, admitted under oath during her November 19, 2024 deposition that both accused products incorporate micro-channel heat-sink structures formed in the silicon substrate of the photonic integrated circuit, that these structures are thermally coupled to active photonic components, and that she was unable to identify specific non-infringing alternatives to the accused thermal management design.

Taken together, this evidence is overwhelming and uncontroverted. There is no genuine dispute of material fact as to whether the LumiLink 400G-ZR+ and LumiLink 800G-DR8 literally practice each and every limitation of Claims 1, 4, and 6 of the '562 Patent. OWS is entitled to judgment as a matter of law.

II. STATEMENT OF THE ISSUES PRESENTED

This motion presents the following two issues for resolution by the Court:

1. Whether Lumicore's LumiLink 400G-ZR+ coherent transceiver module literally infringes Claims 1, 4, and 6 of U.S. Patent No. 9,678,562.

2. Whether Lumicore's LumiLink 800G-DR8 direct-detect transceiver module literally infringes Claims 1, 4, and 6 of U.S. Patent No. 9,678,562.

III. STATEMENT OF UNDISPUTED MATERIAL FACTS

The following material facts are undisputed and are supported by the evidence cited herein and in the concurrently filed appendices.

A. The '562 Patent — Background and Prosecution History

1. United States Patent No. 9,678,562 is titled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks." See Appendix 8 (Certified Copy of U.S. Patent No. 9,678,562).

2. The '562 Patent was filed on November 22, 2014, as U.S. Application No. 14/551,203. Id.

3. The '562 Patent was duly examined by the USPTO and issued on June 13, 2017. Id.

4. The named inventors of the '562 Patent are Dr. James Okada, Dr. Lisa Hartmann, and Dr. Vincent Pratt. Id. at col. 1.

5. The original assignee of the '562 Patent was Solara Optics, Inc. ("Solara"), a California corporation. Id. Solara was subsequently dissolved in 2020.

6. On June 15, 2018, OWS and Solara Optics executed an Asset Purchase Agreement (the "Solara APA") pursuant to which OWS acquired the '562 Patent along with eleven other patents in Solara's photonics and semiconductor portfolio for a total purchase price of $34.5 million. See Appendix 9 (Assignment Records / Chain of Title, including relevant excerpts of the Solara APA and USPTO assignment recordation).

7. The assignment was duly recorded at the USPTO. OWS is the sole and current assignee of record of the '562 Patent. See Appendix 9.

8. All maintenance fees required to keep the '562 Patent in force have been timely paid. The patent remains in full force and effect as of the date of this filing.

9. The '562 Patent is a member of a patent family that includes U.S. Patent No. 10,234,847 (the "'847 Patent"). The '562 Patent and the '847 Patent share a continuation relationship; specifically, the application that matured into the '847 Patent was filed as a continuation of the application that matured into the '562 Patent. Both patents are asserted in this action.

10. The '562 Patent was prosecuted before the USPTO by Cascade IP Advisors, LLC, with Dr. Martin Chu serving as lead prosecution attorney.

11. To date, no petition for inter partes review ("IPR") has been filed against the '562 Patent before the Patent Trial and Appeal Board.

B. The Asserted Claims (Claims 1, 4, and 6)

12. Independent Claim 1 of the '562 Patent recites:

1. A method for thermal management of a photonic integrated circuit, the method comprising:

(a) providing a photonic circuit substrate having at least one active photonic component disposed thereon;

(b) forming a plurality of micro-channels within or adjacent to the photonic circuit substrate, the micro-channels defining a micro-channel heat sink, the forming comprising using a semiconductor fabrication process to create the plurality of micro-channels in a surface of the substrate;

(c) circulating a thermal transfer medium through the plurality of micro-channels to transfer heat generated by the at least one active photonic component away from the photonic circuit substrate.

See Appendix 8 ('562 Patent, col. 14, ll. 22–38).

13. Dependent Claim 4 of the '562 Patent recites:

4. The method of claim 1, wherein the plurality of micro-channels are arranged in a substantially parallel array, each micro-channel having a width of between approximately 20 µm and approximately 500 µm, a depth of between approximately 50 µm and approximately 800 µm, and a center-to-center spacing of between approximately 40 µm and approximately 1000 µm.

See Appendix 8 ('562 Patent, col. 14, ll. 50–58).

14. Dependent Claim 6 of the '562 Patent recites:

6. The method of claim 1, wherein the micro-channel heat sink is positioned in direct thermal communication with the at least one active photonic component such that the micro-channel heat sink provides localized cooling to the active photonic component, the active photonic component comprising at least one of a laser diode, a modulator, a photodetector, or a wavelength multiplexer integrated on the photonic circuit substrate.

See Appendix 8 ('562 Patent, col. 15, ll. 1–10).

15. Claims 4 and 6 each depend from independent Claim 1. Accordingly, each of Claims 4 and 6 incorporates all of the limitations of Claim 1 and adds further limitations as recited therein.

C. Claim Construction — Relevant Constructions

16. On October 28, 2024, the parties filed their Joint Claim Construction Statement (D.E. 40), identifying fourteen disputed claim terms across the four patents asserted in this action, including terms appearing in the '562 Patent.

17. Following the Joint Claim Construction Statement, the parties submitted claim construction briefing. OWS filed its Opening Claim Construction Brief on November 15, 2024 (D.E. 44). Lumicore filed its Responsive Claim Construction Brief on December 6, 2024 (D.E. 48). OWS filed its Reply Claim Construction Brief on December 20, 2024 (D.E. 52). Lumicore filed a Sur-Reply on January 10, 2025 (D.E. 56), by leave of Court.

18. The Court held a Markman hearing on March 14, 2025, at which the Court received argument and testimony on the disputed claim terms. See D.E. 62 (Minute Entry).

19. Of particular relevance to this motion, the parties disputed the construction of the term "micro-channel heat sink" as it appears in the '562 Patent.

(a) OWS proposed the following construction: "a heat-dissipating structure containing channels with a hydraulic diameter of less than 1 mm."

(b) Lumicore proposed the following construction: "a closed-loop liquid-cooling system with channels having a hydraulic diameter between 10 µm and 200 µm."

20. The Court issued its Claim Construction Order (the "Markman Order") on [DATE TO BE INSERTED UPON ISSUANCE]. See Appendix 10 (Court's Claim Construction Order). The Court adopted the following construction for the term "micro-channel heat sink": [CONSTRUCTION TO BE INSERTED UPON ISSUANCE OF MARKMAN ORDER].

21. As demonstrated below in the argument section, the accused products satisfy the "micro-channel heat sink" limitation under either party's proposed construction and, accordingly, under any construction the Court has adopted or may adopt. The motion is strongest under OWS's proposed construction, but infringement is established even under Lumicore's narrower proposal.

22. All other claim terms relevant to Claims 1, 4, and 6 of the '562 Patent that were not identified as disputed in the Joint Claim Construction Statement were agreed by the parties to carry their plain and ordinary meaning as would be understood by a person of ordinary skill in the art ("POSITA") at the time of the invention.

D. The Accused Products

23. The LumiLink 400G-ZR+ is Lumicore's 400-gigabit coherent optical transceiver module. The product was commercially launched in the third quarter of 2022. According to Lumicore's publicly filed segment disclosures, the LumiLink 400G-ZR+ generated revenue of approximately $94.8 million in fiscal year 2023. See Declaration of Dr. Caroline Ashford ("Ashford Decl.") ¶ 14; Appendix 6 (Lumicore Design Documents, Exhibit 6-A).

24. The LumiLink 800G-DR8 is Lumicore's 800-gigabit direct-detect optical transceiver module. The product was commercially launched in the first quarter of 2023. According to Lumicore's publicly filed segment disclosures, the LumiLink 800G-DR8 generated revenue of approximately $128.4 million in fiscal year 2023. See Ashford Decl. ¶ 15; Appendix 6 (Lumicore Design Documents, Exhibit 6-B).

25. Both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8 are silicon-photonics-based transceiver modules. Each product incorporates a photonic integrated circuit ("PIC") fabricated on a silicon substrate. Each product further incorporates embedded thermal management structures within or adjacent to the PIC substrate. These facts are undisputed.

26. The LumiLink 400G-ZR+ and the LumiLink 800G-DR8 are among the accused products identified in OWS's P.R. 3-1 Infringement Contentions served on September 16, 2024 (D.E. 32). OWS's infringement contentions include a detailed claim chart for the '562 Patent (covering Claims 1, 4, 6, and 11), mapping each limitation to specific structures and processes in the accused products with supporting evidence. See Appendix 7 (Claim Charts — '562 Patent, Claims 1, 4, and 6).

E. Benchmark Semiconductor Analysis, LLC Teardown Reports

27. OWS retained Benchmark Semiconductor Analysis, LLC ("Benchmark"), an independent semiconductor reverse-engineering and analysis firm located at 2244 Mission College Boulevard, Santa Clara, California 95054, to perform physical teardown and reverse-engineering analysis of the accused products. Benchmark was engaged in November 2022 pursuant to a consulting agreement between Benchmark and OWS.

28. The teardown analyses were conducted under the direction and supervision of Kevin Ng, Benchmark's lead analytical engineer. Mr. Ng has over fifteen years of experience in semiconductor device reverse engineering, failure analysis, and physical characterization. See Appendix 2 (Declaration of Kevin Ng in Support of Motion for Partial Summary Judgment) ("Ng Decl.").

29. Benchmark delivered its teardown report on the LumiLink 400G-ZR+ on December 12, 2022. The report confirmed the presence of embedded micro-channel heat-sink structures within the silicon substrate of the LumiLink 400G-ZR+ PIC, as well as waveguide multiplexer structures and other features corresponding to the asserted claim limitations. See Ng Decl. ¶¶ 7–12; Ashford Decl., Appendix A (Annotated Teardown Photographs for the LumiLink 400G-ZR+).

30. Benchmark delivered its teardown report on the LumiLink 800G-DR8 in June 2023. The report reached the same conclusions regarding the presence of micro-channel heat-sink structures embedded within the silicon substrate of the LumiLink 800G-DR8 PIC, and additionally identified thermal coupling between the micro-channel structures and active photonic components including laser diodes and modulators. See Ng Decl. ¶¶ 13–18; Ashford Decl., Appendix A (Annotated Teardown Photographs for the LumiLink 800G-DR8).

31. Mr. Ng was deposed on January 7, 2025. During his deposition, Mr. Ng confirmed the teardown methodology employed by Benchmark, including the use of focused ion beam ("FIB") cross-sectioning, scanning electron microscopy ("SEM"), and energy-dispersive X-ray spectroscopy ("EDS") to characterize the micro-channel structures. Mr. Ng also confirmed the chain of custody for all accused product samples from procurement through analysis and storage. Mr. Ng identified specific physical structures in the accused products corresponding to each asserted claim limitation of Claims 1, 4, and 6 of the '562 Patent. See Appendix 5 (Excerpts of Deposition Transcript — Kevin Ng (January 7, 2025)).

32. Annotated teardown photographs cross-referenced to each claim limitation of Claims 1, 4, and 6 are included as Appendix A to the Declaration of Dr. Caroline Ashford. See Ashford Decl., Appendix A.

F. Lumicore's Own Design Documents

33. In the course of fact discovery, Lumicore produced approximately 147,000 documents comprising approximately 980,000 pages. A substantial portion of these documents were designated by Lumicore as "Highly Confidential — Attorneys' Eyes Only" under the three-tier Stipulated Protective Order entered by the Court on July 15, 2024 (D.E. 22).

34. Among the documents produced by Lumicore, several categories of documents are directly relevant to the infringement analysis and independently confirm the presence of the claimed structures and methods in the accused products:

(a) Engineering Specification Documents for the LumiLink 400G-ZR+ Thermal Management Subsystem (Bates Nos. LUMI-00045678 through LUMI-00045712): These documents expressly describe and depict micro-channel arrays formed in the silicon substrate of the LumiLink 400G-ZR+ PIC. The specifications include channel dimensions and hydraulic diameters that fall within the scope of the claimed "micro-channel heat sink" under either party's proposed construction. Specifically, the engineering specifications identify channel widths of 80 µm to 150 µm, channel depths of 200 µm to 400 µm, and hydraulic diameters of approximately 110 µm to 170 µm. See Appendix 6, Exhibit 6-A.

(b) CAD/Layout Files for the LumiLink 800G-DR8 Photonic IC (Bates Nos. LUMI-00078234 through LUMI-00078298): These files show embedded micro-channel structures in the silicon substrate of the LumiLink 800G-DR8 PIC positioned in direct thermal contact with active photonic components, including laser diodes and electro-optic modulators. The layout files confirm the spatial relationship between the micro-channel heat-sink structures and the active photonic components, as required by Claim 6. See Appendix 6, Exhibit 6-B.

(c) Fabrication Run Data for Both Accused Products (Bates Nos. LUMI-00092110 through LUMI-00092187): These documents describe the manufacturing process steps employed to create the micro-channel structures in the silicon substrates of both accused products. The fabrication run data confirms that deep reactive-ion etching ("DRIE") — a standard semiconductor fabrication process — was used to form the micro-channels, consistent with limitation 1(b) of Claim 1. See Appendix 6, Exhibit 6-C.

35. These documents are produced by Lumicore itself and constitute admissions by a party-opponent. They independently corroborate the findings of the Benchmark teardown analysis and the deposition testimony of Lumicore's CTO.

G. Deposition Testimony of Dr. Sandra Michaud (Lumicore CTO)

36. Dr. Sandra Michaud is the Chief Technology Officer of Lumicore Technologies, Inc. Dr. Michaud holds a Ph.D. in Electrical Engineering from the Massachusetts Institute of Technology and has served as Lumicore's CTO since 2019. She was identified by Lumicore as a person most knowledgeable regarding the design and engineering of the accused products.

37. Dr. Michaud was deposed on November 19, 2024. See Appendix 3 (Excerpts of Deposition Transcript — Dr. Sandra Michaud (November 19, 2024)).

38. During her deposition, Dr. Michaud made the following key admissions:

(a) Dr. Michaud acknowledged that the LumiLink 400G-ZR+ and the LumiLink 800G-DR8 both incorporate micro-channel heat-sink structures formed in the silicon substrate of the photonic integrated circuit. See Appendix 3, Michaud Dep. Tr. at 87:14–88:9 ("Q: Does the LumiLink 400G-ZR+ incorporate micro-channel heat-sink structures formed within the silicon substrate of its photonic integrated circuit? A: Yes, there are micro-channel structures in the substrate that are part of the thermal management system."); id. at 91:3–12 (same admission regarding the LumiLink 800G-DR8).

(b) Dr. Michaud admitted that she could not identify specific non-infringing alternatives to the accused thermal management design as implemented in the LumiLink 400G-ZR+ or the LumiLink 800G-DR8. See Appendix 3, Michaud Dep. Tr. at 112:18–113:7 ("Q: Can you identify any specific alternative thermal management design that Lumicore could have used in the LumiLink 400G-ZR+ that would not include micro-channel heat-sink structures? A: I'm not prepared to identify a specific alternative sitting here today. Our engineers explored various options during the design phase, but I can't point to a specific non-infringing design.").

(c) Dr. Michaud admitted that she reviewed OWS's published patent application No. 2018/0123456, which corresponds to the '193 Patent and is in a related family to the '562 Patent, during the design phase of the LumiLink product line. See Appendix 3, Michaud Dep. Tr. at 134:2–135:11 ("Q: Did you review any patents or published patent applications assigned to Optiwave Semiconductor during the design of the LumiLink products? A: I recall reviewing at least one published application. I believe it was the — I'd have to look at the number, but it related to thermal management of photonic ICs. Q: Would that be published application 2018/0123456? A: That number sounds correct, yes.").

(d) Dr. Michaud confirmed that the thermal management structures incorporating micro-channel heat sinks were a critical design element for the performance of both accused products. See Appendix 3, Michaud Dep. Tr. at 96:8–97:1 ("Q: Would you agree that the micro-channel heat-sink structures in the LumiLink products are critical to the thermal performance of those products? A: They are an important part of the thermal management system, yes. Without effective thermal management, the optical performance of the PIC would degrade significantly.").

(e) Dr. Michaud confirmed that the thermal management design of both products involves circulating a coolant or thermal transfer medium through the embedded micro-channel structures. See Appendix 3, Michaud Dep. Tr. at 93:15–94:6 ("Q: Does the thermal management system in the LumiLink 400G-ZR+ involve circulating a fluid through the micro-channels? A: Yes. There is a thermal transfer fluid — a dielectric coolant — that circulates through the micro-channel network.").

H. Additional Deposition Testimony

39. Raymond Bautista, General Counsel of Lumicore Technologies, Inc., was deposed on December 3, 2024. See Appendix 4 (Excerpts of Deposition Transcript — Raymond Bautista (December 3, 2024)).

(a) Mr. Bautista confirmed that he received a licensing letter from FairPoint Licensing Group, LLC dated January 15, 2023, which identified the '562 Patent (among others) and alleged that Lumicore's products infringed OWS's patents. See Appendix 4, Bautista Dep. Tr. at 34:7–35:2.

(b) Mr. Bautista admitted that no formal design-around analysis was commissioned by Lumicore before the commercial launch of either the LumiLink 400G-ZR+ or the LumiLink 800G-DR8. See Appendix 4, Bautista Dep. Tr. at 52:14–53:8 ("Q: Before the launch of the LumiLink 400G-ZR+ in Q3 2022, did Lumicore commission any formal design-around analysis with respect to the '562 Patent? A: Not that I'm aware of, no. Q: What about before the launch of the LumiLink 800G-DR8 in Q1 2023? A: No.").

40. Kevin Ng, Lead Engineer at Benchmark Semiconductor Analysis, LLC, was deposed on January 7, 2025. See Appendix 5 (Excerpts of Deposition Transcript — Kevin Ng (January 7, 2025)).

(a) Mr. Ng confirmed the physical presence of micro-channel structures in the teardown samples of both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8. See Appendix 5, Ng Dep. Tr. at 28:3–29:14.

(b) Mr. Ng confirmed the correspondence of those physical structures to the limitations recited in Claims 1, 4, and 6 of the '562 Patent, as reflected in his annotated teardown photographs. See Appendix 5, Ng Dep. Tr. at 45:9–48:22.

(c) Mr. Ng confirmed that the teardown methodology employed — including FIB cross-sectioning and SEM imaging — is a standard and accepted methodology in the semiconductor reverse-engineering field for characterizing micro-scale structures. See Appendix 5, Ng Dep. Tr. at 15:2–17:11.

(d) Mr. Ng confirmed the chain of custody for all accused product samples analyzed by Benchmark. See Appendix 5, Ng Dep. Tr. at 10:6–13:18.

I. Pre-Suit Notice and Chain of Events

41. FairPoint Licensing Group, LLC ("FairPoint"), OWS's authorized licensing agent (Managing Director: Angela Reeves), sent its first licensing and notice letter to Raymond Bautista, General Counsel of Lumicore Technologies, on January 15, 2023. The letter identified the '562 Patent along with the '847 Patent and the '193 Patent, attached claim charts for each patent, and informed Lumicore that OWS believed certain Lumicore products infringed these patents. The letter invited Lumicore to discuss a licensing arrangement.

42. FairPoint sent a second licensing letter to Lumicore on May 15, 2023. This letter added the '015 Patent to the list of asserted patents and expanded the list of accused products to include the LumiLink 800G-DR8, which had been commercially launched by Lumicore in Q1 2023.

43. An in-person licensing meeting was held on April 20, 2023, in Austin, Texas. The meeting was attended by Angela Reeves (FairPoint, on behalf of OWS), Rebecca Tanaka (General Counsel, OWS), Raymond Bautista (General Counsel, Lumicore), and Catherine "Kate" Rourke (Hawthorne Vega & Cruz LLP, outside patent litigation counsel for Lumicore). The parties were unable to reach a resolution.

44. By letter dated July 10, 2023, Lumicore, through outside counsel Kate Rourke of Hawthorne Vega & Cruz LLP, declined to take a license to OWS's patents, stating that Lumicore had obtained "competent legal opinions" that its products did not infringe the identified patents.

45. OWS filed the Complaint in this action on April 22, 2024 (D.E. 1), asserting claims of infringement of the '562 Patent, the '847 Patent, the '193 Patent, and the '015 Patent.

IV. LEGAL STANDARD

A. Summary Judgment Under Rule 56(a)

Summary judgment is appropriate where "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). In making this determination, the Court must view the evidence in the light most favorable to the nonmoving party and draw all reasonable inferences in the nonmoving party's favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).

The moving party bears the initial burden of identifying those portions of the record that it believes demonstrate the absence of a genuine dispute of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). This burden may be satisfied by pointing to the absence of evidence supporting an essential element of the non-movant's case on which the non-movant bears the burden of proof at trial. Id. at 325.

Once the movant carries its initial burden, the burden shifts to the nonmoving party to go beyond the pleadings and identify specific facts showing that there is a genuine issue for trial. Anderson, 477 U.S. at 248. A dispute of fact is "genuine" only if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id. 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). Conclusory allegations, unsubstantiated assertions, or a mere "scintilla" of evidence are insufficient to defeat a properly supported motion for summary judgment. Anderson, 477 U.S. at 252; Little v. Liquid Air Corp., 37 F.3d 1069, 1075 (5th Cir. 1994) (en banc).

B. Literal Patent Infringement

Direct patent infringement is governed by 35 U.S.C. § 271(a), which provides that "whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent."

Patent infringement analysis involves a well-established two-step inquiry. First, the claims of the patent are construed as a matter of law to determine their scope and meaning. Markman v. Westview Instruments, Inc., 517 U.S. 370, 384–91 (1996). Second, the properly construed claims are compared to the accused product or process to determine whether the accused product or process falls within the scope of the claims — a determination that is a question of fact. Id.; see also Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc).

Literal infringement requires that every limitation set forth in a properly construed claim be found in the accused device or method. Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir. 1995) ("Literal infringement of a claim exists when every limitation recited in the claim is found in the accused device."). Each element of the claim must be present in the accused product exactly as set forth in the claim; if even a single limitation is not met, there can be no literal infringement of that claim. Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991).

Summary judgment of infringement is appropriate where the evidence is so one-sided that no reasonable jury could find non-infringement. See Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1215 (Fed. Cir. 2014); KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1358 (Fed. Cir. 2000) (affirming summary judgment of infringement where the accused product "unquestionably" met each claim limitation). As the Federal Circuit has recognized, "[s]ummary judgment of infringement is proper when no reasonable jury could find that the accused product does not meet a limitation." Severin Holdings v. Quillon Corporation, 289 F.3d 801, 812 (Fed. Cir. 2002).

C. Partial Summary Judgment

This motion seeks partial summary judgment on the question of infringement only. Specifically, OWS seeks a finding of literal infringement of Claims 1, 4, and 6 of the '562 Patent by the LumiLink 400G-ZR+ and the LumiLink 800G-DR8.

This motion does not seek summary judgment on any other issue. The following issues remain for trial and are expressly not addressed by this motion:

• Infringement of Claim 11 of the '562 Patent;

• Infringement of the '847 Patent, the '193 Patent, and the '015 Patent;

• Validity of the '562 Patent (including Lumicore's defenses under 35 U.S.C. §§ 102 and 103);

• Damages (both reasonable royalty and lost profits);

• Willful infringement under Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93 (2016);

• Injunctive relief under Northgate Group v. MercExchange, L.L.C., 547 U.S. 388 (2006);

• Any other claims and defenses raised in the pleadings.

Partial summary judgment on the question of infringement will streamline the remaining proceedings by eliminating the need for the jury to decide the factual question of whether the accused products practice the limitations of the asserted claims. This will allow the trial to focus on the genuinely disputed issues, including validity and damages.

V. ARGUMENT

A. Claim-by-Claim, Limitation-by-Limitation Analysis — Claim 1 of the '562 Patent

Independent Claim 1 of the '562 Patent is a method claim comprising a preamble and three method steps (limitations 1(a), 1(b), and 1(c)). The undisputed evidence establishes that both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8 literally satisfy each and every element of Claim 1.

1. Preamble of Claim 1

The preamble of Claim 1 recites: "A method for thermal management of a photonic integrated circuit."

As an initial matter, the preamble of Claim 1 is not limiting because it merely states the intended purpose or use of the claimed method and does not provide any additional structural or methodological limitation beyond what is recited in the body of the claim. See Catalina Mktg., 289 F.3d at 808 ("In general, a preamble limits the invention if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim." (internal quotation marks omitted)). The body of Claim 1 independently recites all of the substantive limitations of the claimed method, and the preamble merely describes the general field of use.

However, even if the Court were to construe the preamble as limiting, it is plainly met by both accused products. Both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8 are silicon-photonics transceiver modules that incorporate photonic integrated circuits. This fact is undisputed. See Ashford Decl. ¶ 22; Michaud Dep. Tr. at 42:5–12 (confirming that both LumiLink products are "silicon-photonics-based transceiver modules" incorporating "photonic integrated circuits"). Moreover, both products employ thermal management methods to dissipate heat generated by active photonic components on the PIC. See Michaud Dep. Tr. at 44:18–45:3. Accordingly, whether or not the preamble is limiting, it is satisfied.

2. Limitation 1(a): Providing a Photonic Circuit Substrate Having at Least One Active Photonic Component Disposed Thereon

Limitation 1(a) recites: "providing a photonic circuit substrate having at least one active photonic component disposed thereon."

This limitation requires two elements: (i) a photonic circuit substrate, and (ii) at least one active photonic component disposed on that substrate.

LumiLink 400G-ZR+. The Benchmark teardown report for the LumiLink 400G-ZR+ (December 12, 2022) identifies a silicon photonic circuit substrate on which multiple active photonic components — including coherent laser sources, electro-optic modulators, and photodetectors — are disposed. See Ng Decl. ¶¶ 8–9; Ashford Decl. ¶ 25, Appendix A, Figs. 1A–1C (annotated SEM images of the 400G-ZR+ PIC substrate with active components identified). Lumicore's own engineering specifications for the LumiLink 400G-ZR+ describe the product as incorporating a "silicon photonic integrated circuit with integrated laser, modulator, and receiver elements." See Appendix 6, Exhibit 6-A (LUMI-00045681 at 3). Dr. Michaud confirmed that the LumiLink 400G-ZR+ incorporates a PIC with active photonic components disposed on a silicon substrate. See Michaud Dep. Tr. at 42:5–43:8.

LumiLink 800G-DR8. The Benchmark teardown report for the LumiLink 800G-DR8 (June 2023) similarly identifies a silicon photonic circuit substrate with multiple active photonic components, including eight-channel laser diode arrays and high-speed modulators. See Ng Decl. ¶¶ 14–15; Ashford Decl. ¶ 26, Appendix A, Figs. 2A–2C. Lumicore's CAD/layout files for the LumiLink 800G-DR8 confirm the presence of active photonic components on the PIC substrate. See Appendix 6, Exhibit 6-B (LUMI-00078238 at 5–7). Dr. Michaud similarly confirmed these features for the 800G-DR8. See Michaud Dep. Tr. at 46:11–47:2.

This limitation is met by both accused products. There is no dispute on this point.

3. Limitation 1(b): Forming a Plurality of Micro-Channels Within or Adjacent to the Photonic Circuit Substrate Using a Semiconductor Fabrication Process

Limitation 1(b) recites: "forming a plurality of micro-channels within or adjacent to the photonic circuit substrate, the micro-channels defining a micro-channel heat sink, the forming comprising using a semiconductor fabrication process to create the plurality of micro-channels in a surface of the substrate."

This limitation requires: (i) a plurality of micro-channels formed within or adjacent to the photonic circuit substrate; (ii) that the micro-channels define a "micro-channel heat sink" (as construed by the Court); and (iii) that the forming is accomplished using a semiconductor fabrication process.

The micro-channel structures are present. The Benchmark teardown report for the LumiLink 400G-ZR+ (December 12, 2022) physically identified a plurality of micro-channel structures embedded within the silicon substrate of the PIC. See Ng Decl. ¶ 10; Ashford Decl. ¶ 28, Appendix A, Figs. 3A–3D (FIB cross-section images showing micro-channel array in the 400G-ZR+ substrate). The Benchmark teardown report for the LumiLink 800G-DR8 (June 2023) made the same identification. See Ng Decl. ¶ 16; Ashford Decl. ¶ 29, Appendix A, Figs. 4A–4D. Kevin Ng confirmed these findings under oath. See Ng Dep. Tr. at 28:3–29:14, 45:9–48:22.

Lumicore's own design documents corroborate the Benchmark findings. The engineering specifications for the LumiLink 400G-ZR+ thermal management subsystem expressly depict micro-channel arrays in the silicon substrate. See Appendix 6, Exhibit 6-A (LUMI-00045690 at 8, Fig. 4 ("Micro-Channel Array Cross-Section — PIC Substrate")). The CAD/layout files for the LumiLink 800G-DR8 similarly show embedded micro-channel structures. See Appendix 6, Exhibit 6-B (LUMI-00078245 at 12–14).

Dr. Michaud acknowledged that both products incorporate micro-channel heat-sink structures formed in the silicon substrate. See Michaud Dep. Tr. at 87:14–88:9, 91:3–12.

The structures constitute a "micro-channel heat sink" under any construction. The micro-channel structures identified in the accused products satisfy the term "micro-channel heat sink" under either party's proposed construction — and therefore under any construction the Court has adopted.

Under OWS's proposed construction — "a heat-dissipating structure containing channels with a hydraulic diameter of less than 1 mm" — the accused products clearly satisfy this limitation. The Benchmark measurement data confirms that the channels in both accused products have hydraulic diameters well below 1 mm. Specifically, Benchmark measured hydraulic diameters in the range of approximately 110 µm to 170 µm for the LumiLink 400G-ZR+ and approximately 100 µm to 160 µm for the LumiLink 800G-DR8. See Ng Decl. ¶¶ 11, 17; Ashford Decl. ¶¶ 30–31. These values are orders of magnitude below the 1 mm threshold in OWS's construction.

Under Lumicore's proposed, narrower construction — "a closed-loop liquid-cooling system with channels having a hydraulic diameter between 10 µm and 200 µm" — the accused products still satisfy this limitation. The Benchmark-measured hydraulic diameters (110 µm to 170 µm for the 400G-ZR+; 100 µm to 160 µm for the 800G-DR8) fall squarely within the 10 µm to 200 µm range specified in Lumicore's own proposed construction. See Ng Decl. ¶¶ 11, 17; Ashford Decl. ¶¶ 32–33. Moreover, Lumicore's own engineering specifications confirm the same dimensional range. See Appendix 6, Exhibit 6-A (LUMI-00045694 at 10 (identifying channel hydraulic diameters of 120 µm to 160 µm for the 400G-ZR+ thermal management subsystem)). Furthermore, Lumicore's design documents describe the thermal management system as a closed-loop system in which coolant is circulated through the micro-channels and returned via a recirculation path. See Appendix 6, Exhibit 6-A (LUMI-00045698 at 14 ("Coolant Flow Diagram — Closed Loop")).

Under the Court's adopted construction from the Markman Order, the conclusion is the same. [To be supplemented with specific citation to the Court's construction and confirmation that the accused products satisfy the construction as adopted.] Whether the Court adopted OWS's construction, Lumicore's construction, or some intermediate construction, the measurement data and documentary evidence establish that the micro-channel structures in the accused products fall within the scope of the term.

The micro-channels were formed using a semiconductor fabrication process. Lumicore's fabrication run data for both accused products, produced during discovery, describes the process steps used to create the micro-channels in the silicon substrate. Specifically, the fabrication data identifies deep reactive-ion etching ("DRIE") — also known as the Bosch process — as the primary process used to etch the micro-channel arrays into the silicon substrate. See Appendix 6, Exhibit 6-C (LUMI-00092134 at 6–8 (fabrication process flow for 400G-ZR+ PIC, identifying "DRIE etch step for micro-channel formation"); LUMI-00092158 at 4–5 (same for 800G-DR8 PIC)). DRIE is a well-known semiconductor fabrication process, and its use to form the micro-channels satisfies this limitation.

The Benchmark teardown analysis independently confirmed that the micro-channels were formed using DRIE or a similar microfabrication technique, based on the characteristic scalloped sidewall profile observed in the SEM cross-section images. See Ng Decl. ¶¶ 10, 16; Ashford Decl. ¶¶ 34–35 (identifying the "Bosch process scalloping" visible in the SEM images as diagnostic of DRIE).

Dr. Michaud confirmed the fabrication process during her deposition. See Michaud Dep. Tr. at 99:8–100:3 ("Q: Was the DRIE process used to form the micro-channels in the LumiLink 400G-ZR+ PIC substrate? A: Yes, DRIE is the etching process we use for the micro-channel formation step. Q: And the same process is used for the LumiLink 800G-DR8? A: Yes, the fabrication flow is substantially the same.").

Accordingly, limitation 1(b) is literally met by both accused products.

4. Limitation 1(c): Circulating a Thermal Transfer Medium Through the Micro-Channels

Limitation 1(c) recites: "circulating a thermal transfer medium through the plurality of micro-channels to transfer heat generated by the at least one active photonic component away from the photonic circuit substrate."

This limitation requires that a thermal transfer medium (i.e., a coolant or other heat-transfer fluid) is circulated through the micro-channels for the purpose of transferring heat away from the photonic circuit substrate.

Physical evidence. The Benchmark teardown analysis identified fluid interconnects, inlet and outlet ports, and flow paths in both accused products consistent with the circulation of a thermal transfer medium through the micro-channel network. See Ng Decl. ¶¶ 12, 18; Ashford Decl. ¶ 37, Appendix A, Figs. 5A–5B (annotated images of fluid interconnect structures in the 400G-ZR+), Figs. 6A–6B (same for the 800G-DR8). The presence of these fluid management structures — including micro-scale fluidic manifolds and sealing structures — is inconsistent with any thermal management mechanism other than fluid-based cooling through the micro-channels.

Documentary evidence. Lumicore's design documents include detailed thermal simulation data showing coolant flow through the micro-channel arrays. See Appendix 6, Exhibit 6-A (LUMI-00045701 through LUMI-00045705 (computational fluid dynamics ("CFD") simulation results for the 400G-ZR+ thermal management subsystem, depicting coolant flow velocity profiles and temperature distribution maps within the micro-channel network)); Exhibit 6-B (LUMI-00078267 through LUMI-00078272 (same for the 800G-DR8)). The simulation data expressly models the circulation of a dielectric coolant through the micro-channels to achieve thermal management of the active photonic components.

Deposition admissions. Dr. Michaud directly admitted that the thermal management system in both accused products involves circulating a fluid through the embedded micro-channels. See Michaud Dep. Tr. at 93:15–94:6 ("Q: Does the thermal management system in the LumiLink 400G-ZR+ involve circulating a fluid through the micro-channels? A: Yes. There is a thermal transfer fluid — a dielectric coolant — that circulates through the micro-channel network."); id. at 94:18–95:4 (same confirmation for the LumiLink 800G-DR8).

Accordingly, limitation 1(c) is literally met by both accused products.

5. Summary as to Claim 1

Every limitation of independent Claim 1 of the '562 Patent is literally present in both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8. The evidence establishing infringement is not merely sufficient — it is overwhelming and comes from three independent, mutually corroborating sources: (1) the Benchmark physical teardown analysis; (2) Lumicore's own design documents, including engineering specifications, CAD/layout files, and fabrication run data; and (3) the sworn deposition testimony of Lumicore's CTO, Dr. Sandra Michaud. No reasonable jury could find that either accused product does not literally satisfy each and every limitation of Claim 1.

B. Claim-by-Claim, Limitation-by-Limitation Analysis — Claim 4 of the '562 Patent

1. Dependency on Claim 1

Claim 4 depends from independent Claim 1. As demonstrated above, every limitation of Claim 1 is literally met by both accused products. Accordingly, the analysis for Claim 4 requires only that the additional limitations recited in Claim 4 — beyond those already present in Claim 1 — be satisfied.

2. Additional Limitations of Claim 4: Arrangement and Dimensions of the Micro-Channels

Claim 4 adds the following limitation to the method of Claim 1: "wherein the plurality of micro-channels are arranged in a substantially parallel array, each micro-channel having a width of between approximately 20 µm and approximately 500 µm, a depth of between approximately 50 µm and approximately 800 µm, and a center-to-center spacing of between approximately 40 µm and approximately 1000 µm."

This limitation imposes three specific dimensional requirements on the micro-channels (width, depth, and spacing) and one configurational requirement (substantially parallel array). The undisputed evidence establishes that both accused products satisfy each of these requirements.

Substantially parallel array. The Benchmark teardown analysis of both accused products reveals that the micro-channels are arranged in a substantially parallel configuration — that is, the channels run generally parallel to each other across the substrate in an organized array pattern. See Ng Decl. ¶¶ 10, 16; Ashford Decl. ¶ 39, Appendix A, Figs. 3A, 4A (plan-view optical micrographs showing parallel micro-channel arrays). Lumicore's CAD/layout files confirm this arrangement. See Appendix 6, Exhibit 6-A (LUMI-00045690 at 8), Exhibit 6-B (LUMI-00078245 at 12).

Channel width. Benchmark measured the channel widths in the LumiLink 400G-ZR+ to be in the range of approximately 80 µm to 150 µm, and in the LumiLink 800G-DR8 to be in the range of approximately 75 µm to 140 µm. See Ng Decl. ¶¶ 11, 17; Ashford Decl. ¶ 40. These values fall squarely within the claimed range of "approximately 20 µm to approximately 500 µm." Lumicore's own engineering specifications confirm channel widths of 80 µm to 150 µm for the 400G-ZR+. See Appendix 6, Exhibit 6-A (LUMI-00045694 at 10).

Channel depth. Benchmark measured the channel depths in the LumiLink 400G-ZR+ to be in the range of approximately 200 µm to 400 µm, and in the LumiLink 800G-DR8 to be in the range of approximately 250 µm to 450 µm. See Ng Decl. ¶¶ 11, 17; Ashford Decl. ¶ 41. These values fall within the claimed range of "approximately 50 µm to approximately 800 µm." Lumicore's engineering specifications confirm channel depths of 200 µm to 400 µm for the 400G-ZR+. See Appendix 6, Exhibit 6-A (LUMI-00045694 at 10).

Center-to-center spacing. Benchmark measured the center-to-center spacing between adjacent micro-channels in the LumiLink 400G-ZR+ to be in the range of approximately 160 µm to 300 µm, and in the LumiLink 800G-DR8 to be in the range of approximately 150 µm to 280 µm. See Ng Decl. ¶¶ 11, 17; Ashford Decl. ¶ 42. These values fall within the claimed range of "approximately 40 µm to approximately 1000 µm." Lumicore's design documents confirm spacing values in the same range. See Appendix 6, Exhibit 6-A (LUMI-00045694 at 10–11).

Michaud deposition. During her deposition, Dr. Michaud did not dispute the dimensional characteristics of the micro-channels in either accused product. When asked whether the micro-channels in the LumiLink products had dimensions different from those recited in the claims of the '562 Patent, Dr. Michaud was unable to identify any specific difference. See Michaud Dep. Tr. at 105:3–106:14 ("Q: Can you identify any way in which the dimensions of the micro-channels in the LumiLink 400G-ZR+ differ from the dimensional ranges recited in Claim 4 of the '562 Patent? A: I would have to review the specific claim language and our detailed specifications side by side. Sitting here today, I'm not able to point to a specific dimensional difference.").

3. Summary as to Claim 4

All additional limitations of Claim 4 — the substantially parallel array configuration and the dimensional requirements for channel width, depth, and center-to-center spacing — are literally met by both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8. The Benchmark measurement data, Lumicore's own design specifications, and the CTO's inability to identify any dimensional difference all confirm that the accused products fall squarely within the claimed parameters. Because the Claim 1 limitations are also met (as demonstrated above), Claim 4 is literally infringed by both accused products.

C. Claim-by-Claim, Limitation-by-Limitation Analysis — Claim 6 of the '562 Patent

1. Dependency on Claim 1

Claim 6 depends from independent Claim 1. As demonstrated in Section V.A above, every limitation of Claim 1 is literally met by both accused products. The analysis for Claim 6 therefore requires only that the additional limitations recited in Claim 6 be satisfied.

2. Additional Limitations of Claim 6: Thermal Coupling Between Micro-Channel Heat Sinks and Active Photonic Components

Claim 6 adds the following limitation to the method of Claim 1: "wherein the micro-channel heat sink is positioned in direct thermal communication with the at least one active photonic component such that the micro-channel heat sink provides localized cooling to the active photonic component, the active photonic component comprising at least one of a laser diode, a modulator, a photodetector, or a wavelength multiplexer integrated on the photonic circuit substrate."

This limitation has two principal requirements: (i) the micro-channel heat sink must be in "direct thermal communication" with an active photonic component to provide "localized cooling," and (ii) the active photonic component must be at least one of a laser diode, a modulator, a photodetector, or a wavelength multiplexer.

Physical evidence — Benchmark teardown. The Benchmark teardown photographs of both accused products show the micro-channel heat-sink structures in direct thermal contact with active photonic components on the PIC. For the LumiLink 400G-ZR+, the micro-channel array is positioned directly beneath the coherent laser source and electro-optic modulator regions of the PIC, providing localized thermal management to these components. See Ng Decl. ¶ 12; Ashford Decl. ¶ 44, Appendix A, Figs. 7A–7C (annotated cross-section images showing spatial relationship between micro-channels and active components in the 400G-ZR+). For the LumiLink 800G-DR8, the micro-channel structures are similarly positioned beneath the laser diode array and modulator elements, with the CAD data and physical teardown both confirming direct thermal coupling. See Ng Decl. ¶ 18; Ashford Decl. ¶ 45, Appendix A, Figs. 8A–8C.

Documentary evidence — Lumicore CAD/layout files. Lumicore's CAD/layout files for the LumiLink 800G-DR8 PIC specifically show the embedded micro-channel structures positioned beneath and in thermal communication with active photonic components. See Appendix 6, Exhibit 6-B (LUMI-00078252 at 18, Layout Layer Map, showing micro-channel layer aligned with active device layer; LUMI-00078258 at 22, thermal interface detail showing micro-channels in contact with silicon beneath laser diodes). The design intent — to provide localized cooling to the heat-generating active components — is expressly described in the Lumicore design documentation. See Appendix 6, Exhibit 6-A (LUMI-00045699 at 15 ("The micro-channel heat sink array is positioned directly beneath the high-power active regions of the PIC to provide targeted thermal management and prevent thermal crosstalk between adjacent optical channels.")).

Deposition testimony — Kevin Ng. During his January 7, 2025 deposition, Mr. Ng identified and annotated the thermal coupling between the micro-channel structures and the active photonic components in the teardown samples of both accused products. See Ng Dep. Tr. at 52:3–55:17 (describing the spatial relationship between micro-channels and laser diodes/modulators in the 400G-ZR+ and 800G-DR8, and confirming that the micro-channels are "in direct thermal communication" with the active components).

Deposition testimony — Dr. Michaud. Dr. Michaud confirmed that the thermal management design of both products is intended to, and does, thermally couple the micro-channels to the active photonic elements on the PIC. See Michaud Dep. Tr. at 108:12–109:8 ("Q: Is the micro-channel heat sink in the LumiLink 800G-DR8 positioned so as to be in direct thermal communication with active photonic components on the PIC? A: Yes. The micro-channels are positioned beneath the active regions of the PIC — the laser diodes and modulators — to provide localized cooling. Q: And the same is true for the LumiLink 400G-ZR+? A: Yes, the design philosophy is the same.").

Active photonic component type. Claim 6 requires that the active photonic component comprise "at least one of a laser diode, a modulator, a photodetector, or a wavelength multiplexer." Both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8 incorporate laser diodes and modulators — and in the case of the 400G-ZR+, also photodetectors — integrated on the PIC substrate. This fact is undisputed and confirmed by the Benchmark teardown, Lumicore's design documents, and Dr. Michaud's testimony. See Ashford Decl. ¶ 46; Michaud Dep. Tr. at 42:5–43:8, 46:11–47:2.

3. Summary as to Claim 6

All additional limitations of Claim 6 — the requirement that the micro-channel heat sink be in direct thermal communication with active photonic components to provide localized cooling, and the requirement that the active component be at least one of a laser diode, modulator, photodetector, or wavelength multiplexer — are literally met by both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8. The physical teardown evidence, Lumicore's own layout files and design documentation, and the deposition testimony of both Mr. Ng and Dr. Michaud uniformly confirm the thermal coupling between the micro-channel heat sinks and the active photonic components. Because the Claim 1 limitations are also met, Claim 6 is literally infringed by both accused products.

D. Lumicore Cannot Raise a Genuine Dispute of Material Fact

The evidence of literal infringement of Claims 1, 4, and 6 is not merely sufficient to support a finding — it is overwhelming and uncontroverted. OWS anticipates that Lumicore, through its counsel at Hawthorne Vega & Cruz LLP, may attempt to manufacture a factual dispute to avoid summary judgment. OWS addresses each anticipated argument below and demonstrates that none creates a genuine dispute of material fact.

1. Lumicore's CTO Admissions Are Dispositive

Dr. Sandra Michaud is the highest-ranking technical officer at Lumicore Technologies and was designated by Lumicore as a person most knowledgeable regarding the design and engineering of the accused products. Her deposition admissions carry substantial evidentiary weight.

Under oath, Dr. Michaud admitted that both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8 incorporate micro-channel heat-sink structures formed in the silicon substrate of the photonic integrated circuit. She admitted that a dielectric coolant is circulated through the micro-channel network. She admitted that the micro-channel heat sinks are in direct thermal communication with the active photonic components on the PIC to provide localized cooling. And she was unable to identify any specific non-infringing alternative to the accused thermal management design or any structural difference between the accused products and the claimed invention.

These admissions, standing alone, would be sufficient to establish literal infringement. But they do not stand alone. They are corroborated by — and entirely consistent with — the physical evidence from the Benchmark teardowns and the documentary evidence from Lumicore's own design files. The convergence of all three evidentiary sources on the same conclusion leaves no room for a genuine factual dispute.

2. Lumicore's Design Documents Confirm Infringement

Lumicore's own engineering specifications, CAD/layout files, and fabrication run data — produced in discovery and subject to the Stipulated Protective Order — independently confirm the presence and configuration of every claimed element in both accused products. These are not documents generated by OWS or its experts; they are Lumicore's own records of its own designs and manufacturing processes. They constitute admissions by a party-opponent under Federal Rule of Evidence 801(d)(2) and are among the most probative evidence available in a patent infringement case.

The design documents confirm: (i) the presence of micro-channel heat-sink structures in the PIC substrates; (ii) channel dimensions and hydraulic diameters within the scope of the claims under any reasonable construction; (iii) the use of DRIE to form the micro-channels; (iv) the circulation of a thermal transfer fluid through the micro-channel network; (v) the arrangement of the micro-channels in a substantially parallel array with dimensions within the ranges recited in Claim 4; and (vi) the positioning of the micro-channel heat sinks in direct thermal communication with active photonic components, as required by Claim 6.

3. Lumicore Has Not Produced Countervailing Evidence

Lumicore has not produced — and cannot produce — evidence creating a genuine dispute of material fact on the question of infringement.

Invalidity is not a defense to the factual question of infringement. Lumicore's P.R. 3-3 Invalidity Contentions, served on October 14, 2024, challenge the validity of the '562 Patent on multiple grounds. Lumicore cites U.S. Patent No. 8,412,007 to Bergmann as purported prior art for an obviousness defense under 35 U.S.C. § 103, and cites Dr. Li Wei's conference paper "Thermal Solutions for PICs" (presented at OFC 2013) as purported prior art for an anticipation defense under 35 U.S.C. § 102. OWS vigorously contests Lumicore's invalidity positions, which will be addressed at trial.

However, the invalidity contentions do not create a genuine dispute on the distinct factual question of infringement. Validity and infringement are separate inquiries. See Pandrol USA, LP v. Airboss Ry. Prods., Inc., 320 F.3d 1354, 1365 (Fed. Cir. 2003) ("It is axiomatic that the question of infringement and the question of validity are distinct."). Even if Lumicore were ultimately to succeed in its invalidity challenge (which OWS denies), the factual question of whether the accused products practice the claim limitations is a separate matter that is ripe for summary judgment. The Court may properly grant partial summary judgment on infringement while reserving the question of validity for trial.

Lumicore's non-infringement contentions rest solely on claim construction arguments. Lumicore's non-infringement contentions for the '562 Patent, to the extent they have been articulated, rely primarily on Lumicore's narrow proposed construction of the term "micro-channel heat sink" as requiring a "closed-loop liquid-cooling system with channels having a hydraulic diameter between 10 µm and 200 µm." Lumicore's theory appears to be that if the Court were to adopt its narrow construction, the accused products might not satisfy it because the products do not employ a "closed-loop" system within the meaning Lumicore ascribes to that term.

This argument fails for two reasons. First, as demonstrated above, the accused products satisfy the "micro-channel heat sink" limitation even under Lumicore's proposed construction. The measured hydraulic diameters fall within Lumicore's proposed 10 µm to 200 µm range, and Lumicore's own design documents describe the system as a closed-loop architecture. See Appendix 6, Exhibit 6-A (LUMI-00045698 at 14 ("Coolant Flow Diagram — Closed Loop")). Second, now that the Court has issued its Markman Order, the construction of the disputed terms is settled as a matter of law, and the accused products satisfy the limitation under the Court's adopted construction.

No credible expert dispute. OWS's technical expert, Dr. Caroline Ashford, Professor of Electrical Engineering and Photonics at the Northfield Institute of Technology, has opined in her expert report (served June 15, 2025) that every limitation of Claims 1, 4, and 6 is literally met by both accused products. See Ashford Decl. ¶¶ 22–5

DRAFT — ATTORNEY WORK PRODUCT / PRIVILEGED AND CONFIDENTIAL
UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S MOTION FOR PARTIAL SUMMARY JUDGMENT OF LITERAL INFRINGEMENT OF U.S. PATENT NO. 9,678,562 (CLAIMS 1, 4, AND 6)
Right-click to update Table of Contents
I. INTRODUCTION
Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") respectfully moves this Court for partial summary judgment under Federal Rule of Civil Procedure 56(a) on the issue of literal infringement of Claims 1, 4, and 6 of United States Patent No. 9,678,562 (the "'562 Patent") by two of Defendant Lumicore Technologies, Inc.'s ("Lumicore" or "Defendant") accused products: the LumiLink 400G-ZR+ coherent transceiver module and the LumiLink 800G-DR8 direct-detect transceiver module.
The '562 Patent, titled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks," was filed on November 22, 2014 and duly issued by the United States Patent and Trademark Office ("USPTO") on June 13, 2017. The patent was originally assigned to Solara Optics, Inc. ("Solara"), a California corporation. On June 15, 2018, OWS acquired the '562 Patent — together with eleven other patents in Solara's photonics portfolio — pursuant to an Asset Purchase Agreement between OWS and Solara Optics for a total consideration of $34.5 million. OWS is the sole and current assignee of the '562 Patent as recorded with the USPTO. All maintenance fees have been timely paid and the patent remains in full force and effect. The '562 Patent is in the same patent family as U.S. Patent No. 10,234,847 (the "'847 Patent"), which is also asserted in this action; the two patents share a continuation relationship, and the '562 Patent represents the earlier-filed, earlier-issued member of that family.
This motion addresses only the question of literal infringement of Claims 1, 4, and 6 of the '562 Patent by the two identified accused products. OWS preserves all other infringement theories — including infringement under the doctrine of equivalents — and all other claims asserted against all accused products in this action, including but not limited to Claim 11 of the '562 Patent and the claims of the '847 Patent, U.S. Patent No. 10,892,193 (the "'193 Patent"), and U.S. Patent No. 11,345,015 (the "'015 Patent").
The undisputed record evidence compels only one conclusion: every limitation of Claims 1, 4, and 6 of the '562 Patent is literally present in both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8. This conclusion is supported by three independent and mutually corroborating categories of evidence:
First, the physical teardown analysis conducted by Benchmark Semiconductor Analysis, LLC ("Benchmark"), an independent semiconductor reverse-engineering firm, identified and documented micro-channel heat-sink structures embedded within the photonic integrated circuit ("PIC") substrates of both accused products. Benchmark's lead engineer, Kevin Ng, confirmed these findings under oath during his January 7, 2025 deposition.
Second, Lumicore's own internal design documents — including engineering specifications, computer-aided design ("CAD") layout files, and fabrication run data produced during discovery — expressly describe, depict, and dimensionally characterize the very micro-channel heat-sink structures that correspond element-by-element to the limitations of the asserted claims.
Third, Lumicore's Chief Technology Officer, Dr. Sandra Michaud, admitted under oath during her November 19, 2024 deposition that both accused products incorporate micro-channel heat-sink structures formed in the silicon substrate of the photonic integrated circuit, that these structures are thermally coupled to active photonic components, and that she was unable to identify specific non-infringing alternatives to the accused thermal management design.
Taken together, this evidence is overwhelming and uncontroverted. There is no genuine dispute of material fact as to whether the LumiLink 400G-ZR+ and LumiLink 800G-DR8 literally practice each and every limitation of Claims 1, 4, and 6 of the '562 Patent. OWS is entitled to judgment as a matter of law.
II. STATEMENT OF THE ISSUES PRESENTED
This motion presents the following two issues for resolution by the Court:
1. Whether Lumicore's LumiLink 400G-ZR+ coherent transceiver module literally infringes Claims 1, 4, and 6 of U.S. Patent No. 9,678,562.
2. Whether Lumicore's LumiLink 800G-DR8 direct-detect transceiver module literally infringes Claims 1, 4, and 6 of U.S. Patent No. 9,678,562.
III. STATEMENT OF UNDISPUTED MATERIAL FACTS
The following material facts are undisputed and are supported by the evidence cited herein and in the concurrently filed appendices.
A. The '562 Patent — Background and Prosecution History
1. United States Patent No. 9,678,562 is titled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks." See Appendix 8 (Certified Copy of U.S. Patent No. 9,678,562).
2. The '562 Patent was filed on November 22, 2014, as U.S. Application No. 14/551,203. Id.
3. The '562 Patent was duly examined by the USPTO and issued on June 13, 2017. Id.
4. The named inventors of the '562 Patent are Dr. James Okada, Dr. Lisa Hartmann, and Dr. Vincent Pratt. Id. at col. 1.
5. The original assignee of the '562 Patent was Solara Optics, Inc. ("Solara"), a California corporation. Id. Solara was subsequently dissolved in 2020.
6. On June 15, 2018, OWS and Solara Optics executed an Asset Purchase Agreement (the "Solara APA") pursuant to which OWS acquired the '562 Patent along with eleven other patents in Solara's photonics and semiconductor portfolio for a total purchase price of $34.5 million. See Appendix 9 (Assignment Records / Chain of Title, including relevant excerpts of the Solara APA and USPTO assignment recordation).
7. The assignment was duly recorded at the USPTO. OWS is the sole and current assignee of record of the '562 Patent. See Appendix 9.
8. All maintenance fees required to keep the '562 Patent in force have been timely paid. The patent remains in full force and effect as of the date of this filing.
9. The '562 Patent is a member of a patent family that includes U.S. Patent No. 10,234,847 (the "'847 Patent"). The '562 Patent and the '847 Patent share a continuation relationship; specifically, the application that matured into the '847 Patent was filed as a continuation of the application that matured into the '562 Patent. Both patents are asserted in this action.
10. The '562 Patent was prosecuted before the USPTO by Cascade IP Advisors, LLC, with Dr. Martin Chu serving as lead prosecution attorney.
11. To date, no petition for inter partes review ("IPR") has been filed against the '562 Patent before the Patent Trial and Appeal Board.
B. The Asserted Claims (Claims 1, 4, and 6)
12. Independent Claim 1 of the '562 Patent recites:
1. A method for thermal management of a photonic integrated circuit, the method comprising:
(a) providing a photonic circuit substrate having at least one active photonic component disposed thereon;
(b) forming a plurality of micro-channels within or adjacent to the photonic circuit substrate, the micro-channels defining a micro-channel heat sink, the forming comprising using a semiconductor fabrication process to create the plurality of micro-channels in a surface of the substrate;
(c) circulating a thermal transfer medium through the plurality of micro-channels to transfer heat generated by the at least one active photonic component away from the photonic circuit substrate.
See Appendix 8 ('562 Patent, col. 14, ll. 22–38).
13. Dependent Claim 4 of the '562 Patent recites:
4. The method of claim 1, wherein the plurality of micro-channels are arranged in a substantially parallel array, each micro-channel having a width of between approximately 20 µm and approximately 500 µm, a depth of between approximately 50 µm and approximately 800 µm, and a center-to-center spacing of between approximately 40 µm and approximately 1000 µm.
See Appendix 8 ('562 Patent, col. 14, ll. 50–58).
14. Dependent Claim 6 of the '562 Patent recites:
6. The method of claim 1, wherein the micro-channel heat sink is positioned in direct thermal communication with the at least one active photonic component such that the micro-channel heat sink provides localized cooling to the active photonic component, the active photonic component comprising at least one of a laser diode, a modulator, a photodetector, or a wavelength multiplexer integrated on the photonic circuit substrate.
See Appendix 8 ('562 Patent, col. 15, ll. 1–10).
15. Claims 4 and 6 each depend from independent Claim 1. Accordingly, each of Claims 4 and 6 incorporates all of the limitations of Claim 1 and adds further limitations as recited therein.
C. Claim Construction — Relevant Constructions
16. On October 28, 2024, the parties filed their Joint Claim Construction Statement (D.E. 40), identifying fourteen disputed claim terms across the four patents asserted in this action, including terms appearing in the '562 Patent.
17. Following the Joint Claim Construction Statement, the parties submitted claim construction briefing. OWS filed its Opening Claim Construction Brief on November 15, 2024 (D.E. 44). Lumicore filed its Responsive Claim Construction Brief on December 6, 2024 (D.E. 48). OWS filed its Reply Claim Construction Brief on December 20, 2024 (D.E. 52). Lumicore filed a Sur-Reply on January 10, 2025 (D.E. 56), by leave of Court.
18. The Court held a Markman hearing on March 14, 2025, at which the Court received argument and testimony on the disputed claim terms. See D.E. 62 (Minute Entry).
19. Of particular relevance to this motion, the parties disputed the construction of the term "micro-channel heat sink" as it appears in the '562 Patent.
(a) OWS proposed the following construction: "a heat-dissipating structure containing channels with a hydraulic diameter of less than 1 mm."
(b) Lumicore proposed the following construction: "a closed-loop liquid-cooling system with channels having a hydraulic diameter between 10 µm and 200 µm."
20. The Court issued its Claim Construction Order (the "Markman Order") on [DATE TO BE INSERTED UPON ISSUANCE]. See Appendix 10 (Court's Claim Construction Order). The Court adopted the following construction for the term "micro-channel heat sink": [CONSTRUCTION TO BE INSERTED UPON ISSUANCE OF MARKMAN ORDER].
21. As demonstrated below in the argument section, the accused products satisfy the "micro-channel heat sink" limitation under either party's proposed construction and, accordingly, under any construction the Court has adopted or may adopt. The motion is strongest under OWS's proposed construction, but infringement is established even under Lumicore's narrower proposal.
22. All other claim terms relevant to Claims 1, 4, and 6 of the '562 Patent that were not identified as disputed in the Joint Claim Construction Statement were agreed by the parties to carry their plain and ordinary meaning as would be understood by a person of ordinary skill in the art ("POSITA") at the time of the invention.
D. The Accused Products
23. The LumiLink 400G-ZR+ is Lumicore's 400-gigabit coherent optical transceiver module. The product was commercially launched in the third quarter of 2022. According to Lumicore's publicly filed segment disclosures, the LumiLink 400G-ZR+ generated revenue of approximately $94.8 million in fiscal year 2023. See Declaration of Dr. Caroline Ashford ("Ashford Decl.") ¶ 14; Appendix 6 (Lumicore Design Documents, Exhibit 6-A).
24. The LumiLink 800G-DR8 is Lumicore's 800-gigabit direct-detect optical transceiver module. The product was commercially launched in the first quarter of 2023. According to Lumicore's publicly filed segment disclosures, the LumiLink 800G-DR8 generated revenue of approximately $128.4 million in fiscal year 2023. See Ashford Decl. ¶ 15; Appendix 6 (Lumicore Design Documents, Exhibit 6-B).
25. Both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8 are silicon-photonics-based transceiver modules. Each product incorporates a photonic integrated circuit ("PIC") fabricated on a silicon substrate. Each product further incorporates embedded thermal management structures within or adjacent to the PIC substrate. These facts are undisputed.
26. The LumiLink 400G-ZR+ and the LumiLink 800G-DR8 are among the accused products identified in OWS's P.R. 3-1 Infringement Contentions served on September 16, 2024 (D.E. 32). OWS's infringement contentions include a detailed claim chart for the '562 Patent (covering Claims 1, 4, 6, and 11), mapping each limitation to specific structures and processes in the accused products with supporting evidence. See Appendix 7 (Claim Charts — '562 Patent, Claims 1, 4, and 6).
E. Benchmark Semiconductor Analysis, LLC Teardown Reports
27. OWS retained Benchmark Semiconductor Analysis, LLC ("Benchmark"), an independent semiconductor reverse-engineering and analysis firm located at 2244 Mission College Boulevard, Santa Clara, California 95054, to perform physical teardown and reverse-engineering analysis of the accused products. Benchmark was engaged in November 2022 pursuant to a consulting agreement between Benchmark and OWS.
28. The teardown analyses were conducted under the direction and supervision of Kevin Ng, Benchmark's lead analytical engineer. Mr. Ng has over fifteen years of experience in semiconductor device reverse engineering, failure analysis, and physical characterization. See Appendix 2 (Declaration of Kevin Ng in Support of Motion for Partial Summary Judgment) ("Ng Decl.").
29. Benchmark delivered its teardown report on the LumiLink 400G-ZR+ on December 12, 2022. The report confirmed the presence of embedded micro-channel heat-sink structures within the silicon substrate of the LumiLink 400G-ZR+ PIC, as well as waveguide multiplexer structures and other features corresponding to the asserted claim limitations. See Ng Decl. ¶¶ 7–12; Ashford Decl., Appendix A (Annotated Teardown Photographs for the LumiLink 400G-ZR+).
30. Benchmark delivered its teardown report on the LumiLink 800G-DR8 in June 2023. The report reached the same conclusions regarding the presence of micro-channel heat-sink structures embedded within the silicon substrate of the LumiLink 800G-DR8 PIC, and additionally identified thermal coupling between the micro-channel structures and active photonic components including laser diodes and modulators. See Ng Decl. ¶¶ 13–18; Ashford Decl., Appendix A (Annotated Teardown Photographs for the LumiLink 800G-DR8).
31. Mr. Ng was deposed on January 7, 2025. During his deposition, Mr. Ng confirmed the teardown methodology employed by Benchmark, including the use of focused ion beam ("FIB") cross-sectioning, scanning electron microscopy ("SEM"), and energy-dispersive X-ray spectroscopy ("EDS") to characterize the micro-channel structures. Mr. Ng also confirmed the chain of custody for all accused product samples from procurement through analysis and storage. Mr. Ng identified specific physical structures in the accused products corresponding to each asserted claim limitation of Claims 1, 4, and 6 of the '562 Patent. See Appendix 5 (Excerpts of Deposition Transcript — Kevin Ng (January 7, 2025)).
32. Annotated teardown photographs cross-referenced to each claim limitation of Claims 1, 4, and 6 are included as Appendix A to the Declaration of Dr. Caroline Ashford. See Ashford Decl., Appendix A.
F. Lumicore's Own Design Documents
33. In the course of fact discovery, Lumicore produced approximately 147,000 documents comprising approximately 980,000 pages. A substantial portion of these documents were designated by Lumicore as "Highly Confidential — Attorneys' Eyes Only" under the three-tier Stipulated Protective Order entered by the Court on July 15, 2024 (D.E. 22).
34. Among the documents produced by Lumicore, several categories of documents are directly relevant to the infringement analysis and independently confirm the presence of the claimed structures and methods in the accused products:
(a) Engineering Specification Documents for the LumiLink 400G-ZR+ Thermal Management Subsystem (Bates Nos. LUMI-00045678 through LUMI-00045712): These documents expressly describe and depict micro-channel arrays formed in the silicon substrate of the LumiLink 400G-ZR+ PIC. The specifications include channel dimensions and hydraulic diameters that fall within the scope of the claimed "micro-channel heat sink" under either party's proposed construction. Specifically, the engineering specifications identify channel widths of 80 µm to 150 µm, channel depths of 200 µm to 400 µm, and hydraulic diameters of approximately 110 µm to 170 µm. See Appendix 6, Exhibit 6-A.
(b) CAD/Layout Files for the LumiLink 800G-DR8 Photonic IC (Bates Nos. LUMI-00078234 through LUMI-00078298): These files show embedded micro-channel structures in the silicon substrate of the LumiLink 800G-DR8 PIC positioned in direct thermal contact with active photonic components, including laser diodes and electro-optic modulators. The layout files confirm the spatial relationship between the micro-channel heat-sink structures and the active photonic components, as required by Claim 6. See Appendix 6, Exhibit 6-B.
(c) Fabrication Run Data for Both Accused Products (Bates Nos. LUMI-00092110 through LUMI-00092187): These documents describe the manufacturing process steps employed to create the micro-channel structures in the silicon substrates of both accused products. The fabrication run data confirms that deep reactive-ion etching ("DRIE") — a standard semiconductor fabrication process — was used to form the micro-channels, consistent with limitation 1(b) of Claim 1. See Appendix 6, Exhibit 6-C.
35. These documents are produced by Lumicore itself and constitute admissions by a party-opponent. They independently corroborate the findings of the Benchmark teardown analysis and the deposition testimony of Lumicore's CTO.
G. Deposition Testimony of Dr. Sandra Michaud (Lumicore CTO)
36. Dr. Sandra Michaud is the Chief Technology Officer of Lumicore Technologies, Inc. Dr. Michaud holds a Ph.D. in Electrical Engineering from the Massachusetts Institute of Technology and has served as Lumicore's CTO since 2019. She was identified by Lumicore as a person most knowledgeable regarding the design and engineering of the accused products.
37. Dr. Michaud was deposed on November 19, 2024. See Appendix 3 (Excerpts of Deposition Transcript — Dr. Sandra Michaud (November 19, 2024)).
38. During her deposition, Dr. Michaud made the following key admissions:
(a) Dr. Michaud acknowledged that the LumiLink 400G-ZR+ and the LumiLink 800G-DR8 both incorporate micro-channel heat-sink structures formed in the silicon substrate of the photonic integrated circuit. See Appendix 3, Michaud Dep. Tr. at 87:14–88:9 ("Q: Does the LumiLink 400G-ZR+ incorporate micro-channel heat-sink structures formed within the silicon substrate of its photonic integrated circuit? A: Yes, there are micro-channel structures in the substrate that are part of the thermal management system."); id. at 91:3–12 (same admission regarding the LumiLink 800G-DR8).
(b) Dr. Michaud admitted that she could not identify specific non-infringing alternatives to the accused thermal management design as implemented in the LumiLink 400G-ZR+ or the LumiLink 800G-DR8. See Appendix 3, Michaud Dep. Tr. at 112:18–113:7 ("Q: Can you identify any specific alternative thermal management design that Lumicore could have used in the LumiLink 400G-ZR+ that would not include micro-channel heat-sink structures? A: I'm not prepared to identify a specific alternative sitting here today. Our engineers explored various options during the design phase, but I can't point to a specific non-infringing design.").
(c) Dr. Michaud admitted that she reviewed OWS's published patent application No. 2018/0123456, which corresponds to the '193 Patent and is in a related family to the '562 Patent, during the design phase of the LumiLink product line. See Appendix 3, Michaud Dep. Tr. at 134:2–135:11 ("Q: Did you review any patents or published patent applications assigned to Optiwave Semiconductor during the design of the LumiLink products? A: I recall reviewing at least one published application. I believe it was the — I'd have to look at the number, but it related to thermal management of photonic ICs. Q: Would that be published application 2018/0123456? A: That number sounds correct, yes.").
(d) Dr. Michaud confirmed that the thermal management structures incorporating micro-channel heat sinks were a critical design element for the performance of both accused products. See Appendix 3, Michaud Dep. Tr. at 96:8–97:1 ("Q: Would you agree that the micro-channel heat-sink structures in the LumiLink products are critical to the thermal performance of those products? A: They are an important part of the thermal management system, yes. Without effective thermal management, the optical performance of the PIC would degrade significantly.").
(e) Dr. Michaud confirmed that the thermal management design of both products involves circulating a coolant or thermal transfer medium through the embedded micro-channel structures. See Appendix 3, Michaud Dep. Tr. at 93:15–94:6 ("Q: Does the thermal management system in the LumiLink 400G-ZR+ involve circulating a fluid through the micro-channels? A: Yes. There is a thermal transfer fluid — a dielectric coolant — that circulates through the micro-channel network.").
H. Additional Deposition Testimony
39. Raymond Bautista, General Counsel of Lumicore Technologies, Inc., was deposed on December 3, 2024. See Appendix 4 (Excerpts of Deposition Transcript — Raymond Bautista (December 3, 2024)).
(a) Mr. Bautista confirmed that he received a licensing letter from FairPoint Licensing Group, LLC dated January 15, 2023, which identified the '562 Patent (among others) and alleged that Lumicore's products infringed OWS's patents. See Appendix 4, Bautista Dep. Tr. at 34:7–35:2.
(b) Mr. Bautista admitted that no formal design-around analysis was commissioned by Lumicore before the commercial launch of either the LumiLink 400G-ZR+ or the LumiLink 800G-DR8. See Appendix 4, Bautista Dep. Tr. at 52:14–53:8 ("Q: Before the launch of the LumiLink 400G-ZR+ in Q3 2022, did Lumicore commission any formal design-around analysis with respect to the '562 Patent? A: Not that I'm aware of, no. Q: What about before the launch of the LumiLink 800G-DR8 in Q1 2023? A: No.").
40. Kevin Ng, Lead Engineer at Benchmark Semiconductor Analysis, LLC, was deposed on January 7, 2025. See Appendix 5 (Excerpts of Deposition Transcript — Kevin Ng (January 7, 2025)).
(a) Mr. Ng confirmed the physical presence of micro-channel structures in the teardown samples of both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8. See Appendix 5, Ng Dep. Tr. at 28:3–29:14.
(b) Mr. Ng confirmed the correspondence of those physical structures to the limitations recited in Claims 1, 4, and 6 of the '562 Patent, as reflected in his annotated teardown photographs. See Appendix 5, Ng Dep. Tr. at 45:9–48:22.
(c) Mr. Ng confirmed that the teardown methodology employed — including FIB cross-sectioning and SEM imaging — is a standard and accepted methodology in the semiconductor reverse-engineering field for characterizing micro-scale structures. See Appendix 5, Ng Dep. Tr. at 15:2–17:11.
(d) Mr. Ng confirmed the chain of custody for all accused product samples analyzed by Benchmark. See Appendix 5, Ng Dep. Tr. at 10:6–13:18.
I. Pre-Suit Notice and Chain of Events
41. FairPoint Licensing Group, LLC ("FairPoint"), OWS's authorized licensing agent (Managing Director: Angela Reeves), sent its first licensing and notice letter to Raymond Bautista, General Counsel of Lumicore Technologies, on January 15, 2023. The letter identified the '562 Patent along with the '847 Patent and the '193 Patent, attached claim charts for each patent, and informed Lumicore that OWS believed certain Lumicore products infringed these patents. The letter invited Lumicore to discuss a licensing arrangement.
42. FairPoint sent a second licensing letter to Lumicore on May 15, 2023. This letter added the '015 Patent to the list of asserted patents and expanded the list of accused products to include the LumiLink 800G-DR8, which had been commercially launched by Lumicore in Q1 2023.
43. An in-person licensing meeting was held on April 20, 2023, in Austin, Texas. The meeting was attended by Angela Reeves (FairPoint, on behalf of OWS), Rebecca Tanaka (General Counsel, OWS), Raymond Bautista (General Counsel, Lumicore), and Catherine "Kate" Rourke (Hawthorne Vega & Cruz LLP, outside patent litigation counsel for Lumicore). The parties were unable to reach a resolution.
44. By letter dated July 10, 2023, Lumicore, through outside counsel Kate Rourke of Hawthorne Vega & Cruz LLP, declined to take a license to OWS's patents, stating that Lumicore had obtained "competent legal opinions" that its products did not infringe the identified patents.
45. OWS filed the Complaint in this action on April 22, 2024 (D.E. 1), asserting claims of infringement of the '562 Patent, the '847 Patent, the '193 Patent, and the '015 Patent.
IV. LEGAL STANDARD
A. Summary Judgment Under Rule 56(a)
Summary judgment is appropriate where "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). In making this determination, the Court must view the evidence in the light most favorable to the nonmoving party and draw all reasonable inferences in the nonmoving party's favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).
The moving party bears the initial burden of identifying those portions of the record that it believes demonstrate the absence of a genuine dispute of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). This burden may be satisfied by pointing to the absence of evidence supporting an essential element of the non-movant's case on which the non-movant bears the burden of proof at trial. Id. at 325.
Once the movant carries its initial burden, the burden shifts to the nonmoving party to go beyond the pleadings and identify specific facts showing that there is a genuine issue for trial. Anderson, 477 U.S. at 248. A dispute of fact is "genuine" only if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id. 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). Conclusory allegations, unsubstantiated assertions, or a mere "scintilla" of evidence are insufficient to defeat a properly supported motion for summary judgment. Anderson, 477 U.S. at 252; Little v. Liquid Air Corp., 37 F.3d 1069, 1075 (5th Cir. 1994) (en banc).
B. Literal Patent Infringement
Direct patent infringement is governed by 35 U.S.C. § 271(a), which provides that "whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent."
Patent infringement analysis involves a well-established two-step inquiry. First, the claims of the patent are construed as a matter of law to determine their scope and meaning. Markman v. Westview Instruments, Inc., 517 U.S. 370, 384–91 (1996). Second, the properly construed claims are compared to the accused product or process to determine whether the accused product or process falls within the scope of the claims — a determination that is a question of fact. Id.; see also Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc).
Literal infringement requires that every limitation set forth in a properly construed claim be found in the accused device or method. Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir. 1995) ("Literal infringement of a claim exists when every limitation recited in the claim is found in the accused device."). Each element of the claim must be present in the accused product exactly as set forth in the claim; if even a single limitation is not met, there can be no literal infringement of that claim. Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991).
Summary judgment of infringement is appropriate where the evidence is so one-sided that no reasonable jury could find non-infringement. See Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1215 (Fed. Cir. 2014); KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1358 (Fed. Cir. 2000) (affirming summary judgment of infringement where the accused product "unquestionably" met each claim limitation). As the Federal Circuit has recognized, "[s]ummary judgment of infringement is proper when no reasonable jury could find that the accused product does not meet a limitation." Severin Holdings v. Quillon Corporation, 289 F.3d 801, 812 (Fed. Cir. 2002).
C. Partial Summary Judgment
This motion seeks partial summary judgment on the question of infringement only. Specifically, OWS seeks a finding of literal infringement of Claims 1, 4, and 6 of the '562 Patent by the LumiLink 400G-ZR+ and the LumiLink 800G-DR8.
This motion does not seek summary judgment on any other issue. The following issues remain for trial and are expressly not addressed by this motion:
• Infringement of Claim 11 of the '562 Patent;
• Infringement of the '847 Patent, the '193 Patent, and the '015 Patent;
• Validity of the '562 Patent (including Lumicore's defenses under 35 U.S.C. §§ 102 and 103);
• Damages (both reasonable royalty and lost profits);
• Willful infringement under Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93 (2016);
• Injunctive relief under Northgate Group v. MercExchange, L.L.C., 547 U.S. 388 (2006);
• Any other claims and defenses raised in the pleadings.
Partial summary judgment on the question of infringement will streamline the remaining proceedings by eliminating the need for the jury to decide the factual question of whether the accused products practice the limitations of the asserted claims. This will allow the trial to focus on the genuinely disputed issues, including validity and damages.
V. ARGUMENT
A. Claim-by-Claim, Limitation-by-Limitation Analysis — Claim 1 of the '562 Patent
Independent Claim 1 of the '562 Patent is a method claim comprising a preamble and three method steps (limitations 1(a), 1(b), and 1(c)). The undisputed evidence establishes that both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8 literally satisfy each and every element of Claim 1.
1. Preamble of Claim 1
The preamble of Claim 1 recites: "A method for thermal management of a photonic integrated circuit."
As an initial matter, the preamble of Claim 1 is not limiting because it merely states the intended purpose or use of the claimed method and does not provide any additional structural or methodological limitation beyond what is recited in the body of the claim. See Catalina Mktg., 289 F.3d at 808 ("In general, a preamble limits the invention if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim." (internal quotation marks omitted)). The body of Claim 1 independently recites all of the substantive limitations of the claimed method, and the preamble merely describes the general field of use.
However, even if the Court were to construe the preamble as limiting, it is plainly met by both accused products. Both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8 are silicon-photonics transceiver modules that incorporate photonic integrated circuits. This fact is undisputed. See Ashford Decl. ¶ 22; Michaud Dep. Tr. at 42:5–12 (confirming that both LumiLink products are "silicon-photonics-based transceiver modules" incorporating "photonic integrated circuits"). Moreover, both products employ thermal management methods to dissipate heat generated by active photonic components on the PIC. See Michaud Dep. Tr. at 44:18–45:3. Accordingly, whether or not the preamble is limiting, it is satisfied.
2. Limitation 1(a): Providing a Photonic Circuit Substrate Having at Least One Active Photonic Component Disposed Thereon
Limitation 1(a) recites: "providing a photonic circuit substrate having at least one active photonic component disposed thereon."
This limitation requires two elements: (i) a photonic circuit substrate, and (ii) at least one active photonic component disposed on that substrate.
LumiLink 400G-ZR+. The Benchmark teardown report for the LumiLink 400G-ZR+ (December 12, 2022) identifies a silicon photonic circuit substrate on which multiple active photonic components — including coherent laser sources, electro-optic modulators, and photodetectors — are disposed. See Ng Decl. ¶¶ 8–9; Ashford Decl. ¶ 25, Appendix A, Figs. 1A–1C (annotated SEM images of the 400G-ZR+ PIC substrate with active components identified). Lumicore's own engineering specifications for the LumiLink 400G-ZR+ describe the product as incorporating a "silicon photonic integrated circuit with integrated laser, modulator, and receiver elements." See Appendix 6, Exhibit 6-A (LUMI-00045681 at 3). Dr. Michaud confirmed that the LumiLink 400G-ZR+ incorporates a PIC with active photonic components disposed on a silicon substrate. See Michaud Dep. Tr. at 42:5–43:8.
LumiLink 800G-DR8. The Benchmark teardown report for the LumiLink 800G-DR8 (June 2023) similarly identifies a silicon photonic circuit substrate with multiple active photonic components, including eight-channel laser diode arrays and high-speed modulators. See Ng Decl. ¶¶ 14–15; Ashford Decl. ¶ 26, Appendix A, Figs. 2A–2C. Lumicore's CAD/layout files for the LumiLink 800G-DR8 confirm the presence of active photonic components on the PIC substrate. See Appendix 6, Exhibit 6-B (LUMI-00078238 at 5–7). Dr. Michaud similarly confirmed these features for the 800G-DR8. See Michaud Dep. Tr. at 46:11–47:2.
This limitation is met by both accused products. There is no dispute on this point.
3. Limitation 1(b): Forming a Plurality of Micro-Channels Within or Adjacent to the Photonic Circuit Substrate Using a Semiconductor Fabrication Process
Limitation 1(b) recites: "forming a plurality of micro-channels within or adjacent to the photonic circuit substrate, the micro-channels defining a micro-channel heat sink, the forming comprising using a semiconductor fabrication process to create the plurality of micro-channels in a surface of the substrate."
This limitation requires: (i) a plurality of micro-channels formed within or adjacent to the photonic circuit substrate; (ii) that the micro-channels define a "micro-channel heat sink" (as construed by the Court); and (iii) that the forming is accomplished using a semiconductor fabrication process.
The micro-channel structures are present. The Benchmark teardown report for the LumiLink 400G-ZR+ (December 12, 2022) physically identified a plurality of micro-channel structures embedded within the silicon substrate of the PIC. See Ng Decl. ¶ 10; Ashford Decl. ¶ 28, Appendix A, Figs. 3A–3D (FIB cross-section images showing micro-channel array in the 400G-ZR+ substrate). The Benchmark teardown report for the LumiLink 800G-DR8 (June 2023) made the same identification. See Ng Decl. ¶ 16; Ashford Decl. ¶ 29, Appendix A, Figs. 4A–4D. Kevin Ng confirmed these findings under oath. See Ng Dep. Tr. at 28:3–29:14, 45:9–48:22.
Lumicore's own design documents corroborate the Benchmark findings. The engineering specifications for the LumiLink 400G-ZR+ thermal management subsystem expressly depict micro-channel arrays in the silicon substrate. See Appendix 6, Exhibit 6-A (LUMI-00045690 at 8, Fig. 4 ("Micro-Channel Array Cross-Section — PIC Substrate")). The CAD/layout files for the LumiLink 800G-DR8 similarly show embedded micro-channel structures. See Appendix 6, Exhibit 6-B (LUMI-00078245 at 12–14).
Dr. Michaud acknowledged that both products incorporate micro-channel heat-sink structures formed in the silicon substrate. See Michaud Dep. Tr. at 87:14–88:9, 91:3–12.
The structures constitute a "micro-channel heat sink" under any construction. The micro-channel structures identified in the accused products satisfy the term "micro-channel heat sink" under either party's proposed construction — and therefore under any construction the Court has adopted.
Under OWS's proposed construction — "a heat-dissipating structure containing channels with a hydraulic diameter of less than 1 mm" — the accused products clearly satisfy this limitation. The Benchmark measurement data confirms that the channels in both accused products have hydraulic diameters well below 1 mm. Specifically, Benchmark measured hydraulic diameters in the range of approximately 110 µm to 170 µm for the LumiLink 400G-ZR+ and approximately 100 µm to 160 µm for the LumiLink 800G-DR8. See Ng Decl. ¶¶ 11, 17; Ashford Decl. ¶¶ 30–31. These values are orders of magnitude below the 1 mm threshold in OWS's construction.
Under Lumicore's proposed, narrower construction — "a closed-loop liquid-cooling system with channels having a hydraulic diameter between 10 µm and 200 µm" — the accused products still satisfy this limitation. The Benchmark-measured hydraulic diameters (110 µm to 170 µm for the 400G-ZR+; 100 µm to 160 µm for the 800G-DR8) fall squarely within the 10 µm to 200 µm range specified in Lumicore's own proposed construction. See Ng Decl. ¶¶ 11, 17; Ashford Decl. ¶¶ 32–33. Moreover, Lumicore's own engineering specifications confirm the same dimensional range. See Appendix 6, Exhibit 6-A (LUMI-00045694 at 10 (identifying channel hydraulic diameters of 120 µm to 160 µm for the 400G-ZR+ thermal management subsystem)). Furthermore, Lumicore's design documents describe the thermal management system as a closed-loop system in which coolant is circulated through the micro-channels and returned via a recirculation path. See Appendix 6, Exhibit 6-A (LUMI-00045698 at 14 ("Coolant Flow Diagram — Closed Loop")).
Under the Court's adopted construction from the Markman Order, the conclusion is the same. [To be supplemented with specific citation to the Court's construction and confirmation that the accused products satisfy the construction as adopted.] Whether the Court adopted OWS's construction, Lumicore's construction, or some intermediate construction, the measurement data and documentary evidence establish that the micro-channel structures in the accused products fall within the scope of the term.
The micro-channels were formed using a semiconductor fabrication process. Lumicore's fabrication run data for both accused products, produced during discovery, describes the process steps used to create the micro-channels in the silicon substrate. Specifically, the fabrication data identifies deep reactive-ion etching ("DRIE") — also known as the Bosch process — as the primary process used to etch the micro-channel arrays into the silicon substrate. See Appendix 6, Exhibit 6-C (LUMI-00092134 at 6–8 (fabrication process flow for 400G-ZR+ PIC, identifying "DRIE etch step for micro-channel formation"); LUMI-00092158 at 4–5 (same for 800G-DR8 PIC)). DRIE is a well-known semiconductor fabrication process, and its use to form the micro-channels satisfies this limitation.
The Benchmark teardown analysis independently confirmed that the micro-channels were formed using DRIE or a similar microfabrication technique, based on the characteristic scalloped sidewall profile observed in the SEM cross-section images. See Ng Decl. ¶¶ 10, 16; Ashford Decl. ¶¶ 34–35 (identifying the "Bosch process scalloping" visible in the SEM images as diagnostic of DRIE).
Dr. Michaud confirmed the fabrication process during her deposition. See Michaud Dep. Tr. at 99:8–100:3 ("Q: Was the DRIE process used to form the micro-channels in the LumiLink 400G-ZR+ PIC substrate? A: Yes, DRIE is the etching process we use for the micro-channel formation step. Q: And the same process is used for the LumiLink 800G-DR8? A: Yes, the fabrication flow is substantially the same.").
Accordingly, limitation 1(b) is literally met by both accused products.
4. Limitation 1(c): Circulating a Thermal Transfer Medium Through the Micro-Channels
Limitation 1(c) recites: "circulating a thermal transfer medium through the plurality of micro-channels to transfer heat generated by the at least one active photonic component away from the photonic circuit substrate."
This limitation requires that a thermal transfer medium (i.e., a coolant or other heat-transfer fluid) is circulated through the micro-channels for the purpose of transferring heat away from the photonic circuit substrate.
Physical evidence. The Benchmark teardown analysis identified fluid interconnects, inlet and outlet ports, and flow paths in both accused products consistent with the circulation of a thermal transfer medium through the micro-channel network. See Ng Decl. ¶¶ 12, 18; Ashford Decl. ¶ 37, Appendix A, Figs. 5A–5B (annotated images of fluid interconnect structures in the 400G-ZR+), Figs. 6A–6B (same for the 800G-DR8). The presence of these fluid management structures — including micro-scale fluidic manifolds and sealing structures — is inconsistent with any thermal management mechanism other than fluid-based cooling through the micro-channels.
Documentary evidence. Lumicore's design documents include detailed thermal simulation data showing coolant flow through the micro-channel arrays. See Appendix 6, Exhibit 6-A (LUMI-00045701 through LUMI-00045705 (computational fluid dynamics ("CFD") simulation results for the 400G-ZR+ thermal management subsystem, depicting coolant flow velocity profiles and temperature distribution maps within the micro-channel network)); Exhibit 6-B (LUMI-00078267 through LUMI-00078272 (same for the 800G-DR8)). The simulation data expressly models the circulation of a dielectric coolant through the micro-channels to achieve thermal management of the active photonic components.
Deposition admissions. Dr. Michaud directly admitted that the thermal management system in both accused products involves circulating a fluid through the embedded micro-channels. See Michaud Dep. Tr. at 93:15–94:6 ("Q: Does the thermal management system in the LumiLink 400G-ZR+ involve circulating a fluid through the micro-channels? A: Yes. There is a thermal transfer fluid — a dielectric coolant — that circulates through the micro-channel network."); id. at 94:18–95:4 (same confirmation for the LumiLink 800G-DR8).
Accordingly, limitation 1(c) is literally met by both accused products.
5. Summary as to Claim 1
Every limitation of independent Claim 1 of the '562 Patent is literally present in both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8. The evidence establishing infringement is not merely sufficient — it is overwhelming and comes from three independent, mutually corroborating sources: (1) the Benchmark physical teardown analysis; (2) Lumicore's own design documents, including engineering specifications, CAD/layout files, and fabrication run data; and (3) the sworn deposition testimony of Lumicore's CTO, Dr. Sandra Michaud. No reasonable jury could find that either accused product does not literally satisfy each and every limitation of Claim 1.
B. Claim-by-Claim, Limitation-by-Limitation Analysis — Claim 4 of the '562 Patent
1. Dependency on Claim 1
Claim 4 depends from independent Claim 1. As demonstrated above, every limitation of Claim 1 is literally met by both accused products. Accordingly, the analysis for Claim 4 requires only that the additional limitations recited in Claim 4 — beyond those already present in Claim 1 — be satisfied.
2. Additional Limitations of Claim 4: Arrangement and Dimensions of the Micro-Channels
Claim 4 adds the following limitation to the method of Claim 1: "wherein the plurality of micro-channels are arranged in a substantially parallel array, each micro-channel having a width of between approximately 20 µm and approximately 500 µm, a depth of between approximately 50 µm and approximately 800 µm, and a center-to-center spacing of between approximately 40 µm and approximately 1000 µm."
This limitation imposes three specific dimensional requirements on the micro-channels (width, depth, and spacing) and one configurational requirement (substantially parallel array). The undisputed evidence establishes that both accused products satisfy each of these requirements.
Substantially parallel array. The Benchmark teardown analysis of both accused products reveals that the micro-channels are arranged in a substantially parallel configuration — that is, the channels run generally parallel to each other across the substrate in an organized array pattern. See Ng Decl. ¶¶ 10, 16; Ashford Decl. ¶ 39, Appendix A, Figs. 3A, 4A (plan-view optical micrographs showing parallel micro-channel arrays). Lumicore's CAD/layout files confirm this arrangement. See Appendix 6, Exhibit 6-A (LUMI-00045690 at 8), Exhibit 6-B (LUMI-00078245 at 12).
Channel width. Benchmark measured the channel widths in the LumiLink 400G-ZR+ to be in the range of approximately 80 µm to 150 µm, and in the LumiLink 800G-DR8 to be in the range of approximately 75 µm to 140 µm. See Ng Decl. ¶¶ 11, 17; Ashford Decl. ¶ 40. These values fall squarely within the claimed range of "approximately 20 µm to approximately 500 µm." Lumicore's own engineering specifications confirm channel widths of 80 µm to 150 µm for the 400G-ZR+. See Appendix 6, Exhibit 6-A (LUMI-00045694 at 10).
Channel depth. Benchmark measured the channel depths in the LumiLink 400G-ZR+ to be in the range of approximately 200 µm to 400 µm, and in the LumiLink 800G-DR8 to be in the range of approximately 250 µm to 450 µm. See Ng Decl. ¶¶ 11, 17; Ashford Decl. ¶ 41. These values fall within the claimed range of "approximately 50 µm to approximately 800 µm." Lumicore's engineering specifications confirm channel depths of 200 µm to 400 µm for the 400G-ZR+. See Appendix 6, Exhibit 6-A (LUMI-00045694 at 10).
Center-to-center spacing. Benchmark measured the center-to-center spacing between adjacent micro-channels in the LumiLink 400G-ZR+ to be in the range of approximately 160 µm to 300 µm, and in the LumiLink 800G-DR8 to be in the range of approximately 150 µm to 280 µm. See Ng Decl. ¶¶ 11, 17; Ashford Decl. ¶ 42. These values fall within the claimed range of "approximately 40 µm to approximately 1000 µm." Lumicore's design documents confirm spacing values in the same range. See Appendix 6, Exhibit 6-A (LUMI-00045694 at 10–11).
Michaud deposition. During her deposition, Dr. Michaud did not dispute the dimensional characteristics of the micro-channels in either accused product. When asked whether the micro-channels in the LumiLink products had dimensions different from those recited in the claims of the '562 Patent, Dr. Michaud was unable to identify any specific difference. See Michaud Dep. Tr. at 105:3–106:14 ("Q: Can you identify any way in which the dimensions of the micro-channels in the LumiLink 400G-ZR+ differ from the dimensional ranges recited in Claim 4 of the '562 Patent? A: I would have to review the specific claim language and our detailed specifications side by side. Sitting here today, I'm not able to point to a specific dimensional difference.").
3. Summary as to Claim 4
All additional limitations of Claim 4 — the substantially parallel array configuration and the dimensional requirements for channel width, depth, and center-to-center spacing — are literally met by both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8. The Benchmark measurement data, Lumicore's own design specifications, and the CTO's inability to identify any dimensional difference all confirm that the accused products fall squarely within the claimed parameters. Because the Claim 1 limitations are also met (as demonstrated above), Claim 4 is literally infringed by both accused products.
C. Claim-by-Claim, Limitation-by-Limitation Analysis — Claim 6 of the '562 Patent
1. Dependency on Claim 1
Claim 6 depends from independent Claim 1. As demonstrated in Section V.A above, every limitation of Claim 1 is literally met by both accused products. The analysis for Claim 6 therefore requires only that the additional limitations recited in Claim 6 be satisfied.
2. Additional Limitations of Claim 6: Thermal Coupling Between Micro-Channel Heat Sinks and Active Photonic Components
Claim 6 adds the following limitation to the method of Claim 1: "wherein the micro-channel heat sink is positioned in direct thermal communication with the at least one active photonic component such that the micro-channel heat sink provides localized cooling to the active photonic component, the active photonic component comprising at least one of a laser diode, a modulator, a photodetector, or a wavelength multiplexer integrated on the photonic circuit substrate."
This limitation has two principal requirements: (i) the micro-channel heat sink must be in "direct thermal communication" with an active photonic component to provide "localized cooling," and (ii) the active photonic component must be at least one of a laser diode, a modulator, a photodetector, or a wavelength multiplexer.
Physical evidence — Benchmark teardown. The Benchmark teardown photographs of both accused products show the micro-channel heat-sink structures in direct thermal contact with active photonic components on the PIC. For the LumiLink 400G-ZR+, the micro-channel array is positioned directly beneath the coherent laser source and electro-optic modulator regions of the PIC, providing localized thermal management to these components. See Ng Decl. ¶ 12; Ashford Decl. ¶ 44, Appendix A, Figs. 7A–7C (annotated cross-section images showing spatial relationship between micro-channels and active components in the 400G-ZR+). For the LumiLink 800G-DR8, the micro-channel structures are similarly positioned beneath the laser diode array and modulator elements, with the CAD data and physical teardown both confirming direct thermal coupling. See Ng Decl. ¶ 18; Ashford Decl. ¶ 45, Appendix A, Figs. 8A–8C.
Documentary evidence — Lumicore CAD/layout files. Lumicore's CAD/layout files for the LumiLink 800G-DR8 PIC specifically show the embedded micro-channel structures positioned beneath and in thermal communication with active photonic components. See Appendix 6, Exhibit 6-B (LUMI-00078252 at 18, Layout Layer Map, showing micro-channel layer aligned with active device layer; LUMI-00078258 at 22, thermal interface detail showing micro-channels in contact with silicon beneath laser diodes). The design intent — to provide localized cooling to the heat-generating active components — is expressly described in the Lumicore design documentation. See Appendix 6, Exhibit 6-A (LUMI-00045699 at 15 ("The micro-channel heat sink array is positioned directly beneath the high-power active regions of the PIC to provide targeted thermal management and prevent thermal crosstalk between adjacent optical channels.")).
Deposition testimony — Kevin Ng. During his January 7, 2025 deposition, Mr. Ng identified and annotated the thermal coupling between the micro-channel structures and the active photonic components in the teardown samples of both accused products. See Ng Dep. Tr. at 52:3–55:17 (describing the spatial relationship between micro-channels and laser diodes/modulators in the 400G-ZR+ and 800G-DR8, and confirming that the micro-channels are "in direct thermal communication" with the active components).
Deposition testimony — Dr. Michaud. Dr. Michaud confirmed that the thermal management design of both products is intended to, and does, thermally couple the micro-channels to the active photonic elements on the PIC. See Michaud Dep. Tr. at 108:12–109:8 ("Q: Is the micro-channel heat sink in the LumiLink 800G-DR8 positioned so as to be in direct thermal communication with active photonic components on the PIC? A: Yes. The micro-channels are positioned beneath the active regions of the PIC — the laser diodes and modulators — to provide localized cooling. Q: And the same is true for the LumiLink 400G-ZR+? A: Yes, the design philosophy is the same.").
Active photonic component type. Claim 6 requires that the active photonic component comprise "at least one of a laser diode, a modulator, a photodetector, or a wavelength multiplexer." Both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8 incorporate laser diodes and modulators — and in the case of the 400G-ZR+, also photodetectors — integrated on the PIC substrate. This fact is undisputed and confirmed by the Benchmark teardown, Lumicore's design documents, and Dr. Michaud's testimony. See Ashford Decl. ¶ 46; Michaud Dep. Tr. at 42:5–43:8, 46:11–47:2.
3. Summary as to Claim 6
All additional limitations of Claim 6 — the requirement that the micro-channel heat sink be in direct thermal communication with active photonic components to provide localized cooling, and the requirement that the active component be at least one of a laser diode, modulator, photodetector, or wavelength multiplexer — are literally met by both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8. The physical teardown evidence, Lumicore's own layout files and design documentation, and the deposition testimony of both Mr. Ng and Dr. Michaud uniformly confirm the thermal coupling between the micro-channel heat sinks and the active photonic components. Because the Claim 1 limitations are also met, Claim 6 is literally infringed by both accused products.
D. Lumicore Cannot Raise a Genuine Dispute of Material Fact
The evidence of literal infringement of Claims 1, 4, and 6 is not merely sufficient to support a finding — it is overwhelming and uncontroverted. OWS anticipates that Lumicore, through its counsel at Hawthorne Vega & Cruz LLP, may attempt to manufacture a factual dispute to avoid summary judgment. OWS addresses each anticipated argument below and demonstrates that none creates a genuine dispute of material fact.
1. Lumicore's CTO Admissions Are Dispositive
Dr. Sandra Michaud is the highest-ranking technical officer at Lumicore Technologies and was designated by Lumicore as a person most knowledgeable regarding the design and engineering of the accused products. Her deposition admissions carry substantial evidentiary weight.
Under oath, Dr. Michaud admitted that both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8 incorporate micro-channel heat-sink structures formed in the silicon substrate of the photonic integrated circuit. She admitted that a dielectric coolant is circulated through the micro-channel network. She admitted that the micro-channel heat sinks are in direct thermal communication with the active photonic components on the PIC to provide localized cooling. And she was unable to identify any specific non-infringing alternative to the accused thermal management design or any structural difference between the accused products and the claimed invention.
These admissions, standing alone, would be sufficient to establish literal infringement. But they do not stand alone. They are corroborated by — and entirely consistent with — the physical evidence from the Benchmark teardowns and the documentary evidence from Lumicore's own design files. The convergence of all three evidentiary sources on the same conclusion leaves no room for a genuine factual dispute.
2. Lumicore's Design Documents Confirm Infringement
Lumicore's own engineering specifications, CAD/layout files, and fabrication run data — produced in discovery and subject to the Stipulated Protective Order — independently confirm the presence and configuration of every claimed element in both accused products. These are not documents generated by OWS or its experts; they are Lumicore's own records of its own designs and manufacturing processes. They constitute admissions by a party-opponent under Federal Rule of Evidence 801(d)(2) and are among the most probative evidence available in a patent infringement case.
The design documents confirm: (i) the presence of micro-channel heat-sink structures in the PIC substrates; (ii) channel dimensions and hydraulic diameters within the scope of the claims under any reasonable construction; (iii) the use of DRIE to form the micro-channels; (iv) the circulation of a thermal transfer fluid through the micro-channel network; (v) the arrangement of the micro-channels in a substantially parallel array with dimensions within the ranges recited in Claim 4; and (vi) the positioning of the micro-channel heat sinks in direct thermal communication with active photonic components, as required by Claim 6.
3. Lumicore Has Not Produced Countervailing Evidence
Lumicore has not produced — and cannot produce — evidence creating a genuine dispute of material fact on the question of infringement.
Invalidity is not a defense to the factual question of infringement. Lumicore's P.R. 3-3 Invalidity Contentions, served on October 14, 2024, challenge the validity of the '562 Patent on multiple grounds. Lumicore cites U.S. Patent No. 8,412,007 to Bergmann as purported prior art for an obviousness defense under 35 U.S.C. § 103, and cites Dr. Li Wei's conference paper "Thermal Solutions for PICs" (presented at OFC 2013) as purported prior art for an anticipation defense under 35 U.S.C. § 102. OWS vigorously contests Lumicore's invalidity positions, which will be addressed at trial.
However, the invalidity contentions do not create a genuine dispute on the distinct factual question of infringement. Validity and infringement are separate inquiries. See Pandrol USA, LP v. Airboss Ry. Prods., Inc., 320 F.3d 1354, 1365 (Fed. Cir. 2003) ("It is axiomatic that the question of infringement and the question of validity are distinct."). Even if Lumicore were ultimately to succeed in its invalidity challenge (which OWS denies), the factual question of whether the accused products practice the claim limitations is a separate matter that is ripe for summary judgment. The Court may properly grant partial summary judgment on infringement while reserving the question of validity for trial.
Lumicore's non-infringement contentions rest solely on claim construction arguments. Lumicore's non-infringement contentions for the '562 Patent, to the extent they have been articulated, rely primarily on Lumicore's narrow proposed construction of the term "micro-channel heat sink" as requiring a "closed-loop liquid-cooling system with channels having a hydraulic diameter between 10 µm and 200 µm." Lumicore's theory appears to be that if the Court were to adopt its narrow construction, the accused products might not satisfy it because the products do not employ a "closed-loop" system within the meaning Lumicore ascribes to that term.
This argument fails for two reasons. First, as demonstrated above, the accused products satisfy the "micro-channel heat sink" limitation even under Lumicore's proposed construction. The measured hydraulic diameters fall within Lumicore's proposed 10 µm to 200 µm range, and Lumicore's own design documents describe the system as a closed-loop architecture. See Appendix 6, Exhibit 6-A (LUMI-00045698 at 14 ("Coolant Flow Diagram — Closed Loop")). Second, now that the Court has issued its Markman Order, the construction of the disputed terms is settled as a matter of law, and the accused products satisfy the limitation under the Court's adopted construction.
No credible expert dispute. OWS's technical expert, Dr. Caroline Ashford, Professor of Electrical Engineering and Photonics at the Northfield Institute of Technology, has opined in her expert report (served June 15, 2025) that every limitation of Claims 1, 4, and 6 is literally met by both accused products. See Ashford Decl. ¶¶ 22–5

DRAFT — ATTORNEY WORK PRODUCT / PRIVILEGED AND CONFIDENTIAL

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

I. INTRODUCTION

II. STATEMENT OF THE ISSUES PRESENTED

III. STATEMENT OF UNDISPUTED MATERIAL FACTS

IV. LEGAL STANDARD

V. ARGUMENT

Record

Parties

Dates

Amounts