DRAFT — PRIVILEGED & CONFIDENTIAL — ATTORNEY WORK PRODUCT
APPENDIX A
CLAIM CHARTS
to the Expert Report of Dr. Caroline Ashford on Infringement
Optiwave Semiconductor Corp. v. Lumicore Technologies, Inc. Case No. 2:24-cv-00319-JRG United States District Court for the Eastern District of Texas
Expert: Dr. Caroline Ashford Professor of Electrical Engineering & Photonics Northfield Institute of Technology Evanston, Illinois
Prepared for Counsel: Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, California 90071
DRAFT — Privileged & Confidential — Attorney Work Product
Due Date for Final Report: June 15, 2025
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I. INTRODUCTION AND PURPOSE
A. Identification of Appendix
This document constitutes Appendix A to the Expert Report of Dr. Caroline Ashford ("Dr. Ashford" or "the Expert") regarding the infringement of United States Patent Nos. 10,234,847 (hereinafter, "the '847 Patent"), 10,891,193 (hereinafter, "the '193 Patent"), 9,678,562 (hereinafter, "the '562 Patent"), and 11,402,015 (hereinafter, "the '015 Patent") (collectively, the "Asserted Patents"), each owned by or assigned to Optiwave Semiconductor Corp. ("OWS" or "Plaintiff").
This Appendix supports the infringement opinions set forth in the body of Dr. Ashford's Expert Report (the "Main Report," drafted separately and submitted concurrently herewith). Specifically, this Appendix contains detailed, element-by-element claim charts that map each asserted claim limitation of the Asserted Patents to the corresponding structure, method, or function found in the accused Lumicore Technologies, Inc. ("Lumicore" or "Defendant") products identified below. The claim charts herein provide the granular evidentiary foundation for the infringement conclusions expressed in the Main Report and are intended to be read in conjunction with the Main Report's technical discussion, claim construction analysis, and expert opinions.
B. Accused Products Covered
The infringement analysis in this Appendix covers three accused Lumicore product families, each of which is a coherent or intensity-modulated optical transceiver module incorporating silicon photonic integrated circuits designed and manufactured by Lumicore:
1. LumiLink 400G-ZR+ — A 400-gigabit coherent optical transceiver module designed to the OIF 400ZR+ Implementation Agreement for data-center interconnect and metro-network applications. The LumiLink 400G-ZR+ was commercially launched in the third quarter of 2022 (Q3 2022). According to Lumicore's audited financial statements and interrogatory responses, the LumiLink 400G-ZR+ generated fiscal-year 2023 ("FY 2023") revenue of approximately $94.8 million. The LumiLink 400G-ZR+ is accused of infringing the '847, '193, and '562 Patents.
2. LumiLink 800G-DR8 — An 800-gigabit intensity-modulated optical transceiver module utilizing eight lanes of 100G-per-lane PAM4 signaling, designed for intra-data-center connectivity applications compliant with the IEEE 802.3df standard. The LumiLink 800G-DR8 was commercially launched in the first quarter of 2023 (Q1 2023). According to Lumicore's audited financial statements and interrogatory responses, the LumiLink 800G-DR8 generated FY 2023 revenue of approximately $128.4 million, making it the highest-revenue accused product in this litigation. The LumiLink 800G-DR8 is accused of infringing the '847, '193, '562, and '015 Patents — all four of the Asserted Patents.
3. LumiEdge 1600G-LR — A 1.6-terabit long-reach optical transceiver module employing sixteen lanes of 100G-per-lane signaling for campus and enterprise backbone applications. The LumiEdge 1600G-LR was commercially launched in the fourth quarter of 2023 (Q4 2023), notably after both of OWS's pre-suit licensing letters sent through its licensing agent, FairPoint IP Solutions (dated January 15, 2023 and May 15, 2023, respectively). According to Lumicore's audited financial statements and interrogatory responses, the LumiEdge 1600G-LR generated FY 2023 revenue of approximately $41.7 million during its initial partial quarter of commercial availability. The LumiEdge 1600G-LR is accused of infringing the '193 and '015 Patents.
The total combined FY 2023 revenue attributable to the accused products is approximately $264.9 million.
C. Sources of Evidence Relied Upon
Dr. Ashford's infringement opinions, as set forth in the claim charts that follow, are based upon her review and analysis of the following categories of evidence:
Benchmark Semiconductor Analysis, LLC Teardown Reports. Benchmark Semiconductor Analysis, LLC ("Benchmark"), an independent semiconductor reverse-engineering and analysis firm, conducted physical teardowns and detailed analyses of each of the three accused Lumicore products. The specific teardown reports relied upon are:
• LumiLink 400G-ZR+ Teardown Report — prepared by Kevin Ng, Lead Engineer at Benchmark, and delivered to OWS's counsel on December 12, 2022. This report includes optical micrographs, scanning electron microscope ("SEM") images, energy-dispersive X-ray spectroscopy ("EDS") elemental analysis data, and dimensional measurements of the silicon photonic die and associated components within the LumiLink 400G-ZR+ transceiver module.
• LumiLink 800G-DR8 Teardown Report — prepared by Benchmark and completed in June 2023. This report includes similar optical micrographs, SEM images, EDS data, and dimensional measurements for the LumiLink 800G-DR8 transceiver module, including detailed analysis of the photonic integrated circuit, electronic driver and TIA die, and thermal management structures.
• LumiEdge 1600G-LR Teardown Report — prepared by Benchmark and completed in February 2024. This report covers the LumiEdge 1600G-LR transceiver module and includes die-level and wafer-level analysis of the photonic integrated circuit, grating coupler structures, and associated transceiver components.
Annotated Teardown Photographs. Benchmark produced annotated teardown photographs for each of the three accused products, identifying and labeling specific structures, components, and features relevant to the Asserted Patents' claim limitations. These annotated photographs are referenced throughout the claim charts with exhibit numbers as produced in discovery and are designated in accordance with the three-tier Stipulated Confidentiality Order entered by the Court on August 19, 2024 (Dkt. No. 47).
Lumicore Design Files Produced in discovery. Lumicore produced in discovery its internal design files for the accused products, including RTL (register-transfer level) schematics, photonic-IC layout files (GDS-II format), mask design files, and photonic simulation files. These design files were produced in response to OWS's First and Second Sets of Requests for Production of Documents (Nos. 1–42 and 43–78, respectively) and are designated "Highly Confidential — Source Code" under the Stipulated Protective Order. Dr. Ashford reviewed these files in the secure review environment established pursuant to the Protective Order's source-code provisions.
Lumicore Engineering Specifications and CAD/Layout Files. In addition to the design files, Lumicore produced engineering specifications, product datasheets, internal characterization reports, and computer-aided design files that describe the architecture, performance parameters, and fabrication processes for the accused products. These materials were produced pursuant to OWS's First and Second Sets of Requests for Production and are designated at various tiers under the Protective Order.
Deposition Testimony. Dr. Ashford reviewed and relies upon the following deposition transcripts:
• Dr. Sandra Michaud (Lumicore Chief Technology Officer) — deposed on November 19, 2024. Dr. Michaud testified regarding Lumicore's product design processes, the architecture of the accused products, thermal management design choices, awareness of OWS's patent portfolio, and the silicon photonic fabrication processes employed by Lumicore.
• Kevin Ng (Benchmark Lead Engineer) — deposed on January 7, 2025. Mr. Ng testified regarding the teardown methodology employed by Benchmark for each of the three accused products, confirmed the chain of custody for the product samples, and described the specific structures and components identified in each teardown, including the waveguide multiplexer, micro-channel heat-sink, coherent transceiver, and grating coupler structures.
• Dr. Jian-Wei Huang (OWS Chief Technology Officer and named inventor on the Asserted Patents) — deposed on November 5, 2024. Dr. Huang testified regarding the design and intended scope of the inventions described in the Asserted Patents, the prosecution history of the patents, and the technical background of the patented technologies.
Patent Specifications, Claims, and Prosecution Histories. Dr. Ashford reviewed the complete specifications, claims, and drawings of each of the four Asserted Patents, as well as the complete file histories (prosecution histories) for each patent before the United States Patent and Trademark Office ("USPTO"), including all office actions, applicant responses, amendments, declarations, and certificates of correction.
Published Technical Literature, IEEE Standards, and Textbook References. Dr. Ashford reviewed and relies upon published technical literature, IEEE and OIF standards documents, and authoritative textbooks in the fields of silicon photonics, optical communications, and semiconductor thermal management, as cited in the Main Report.
Claim Constructions Applied. The claim charts in this Appendix apply the claim constructions proposed by OWS as set forth in the parties' Joint Claim Construction Chart (finalized January 15, 2025) and OWS's Opening Claim Construction Brief (filed November 15, 2024, Dkt. No. 72). As of the date of this draft, the Court has not yet issued its claim construction order; the Markman hearing is scheduled for March 14, 2025. Where the Court has not yet ruled, Dr. Ashford applies OWS's proposed constructions as the primary basis for her infringement analysis and notes where the analysis would differ — if at all — under Lumicore's proposed constructions. As discussed in the Main Report and as demonstrated in the claim charts below, Dr. Ashford opines that under either party's proposed construction for the key disputed terms, the accused products satisfy the relevant claim limitations, except as specifically noted for certain terms where Lumicore's narrower proposed construction is addressed.
D. Person of Ordinary Skill in the Art (POSITA) Definition
As defined in Dr. Ashford's Main Report and supporting declarations, a person of ordinary skill in the art ("POSITA") at the time of the inventions claimed in the Asserted Patents would have had at least a Master of Science (M.S.) degree or a Doctor of Philosophy (Ph.D.) degree in electrical engineering, photonics, optical engineering, or a closely related discipline, together with at least three (3) years of professional experience in the design, fabrication, or characterization of silicon-photonic integrated circuits and/or coherent optical transceiver systems. A lesser amount of formal education could be compensated by additional relevant work experience, and vice versa. This POSITA definition is applied when interpreting the meaning and scope of claim terms throughout the claim charts in this Appendix and is consistent with the level of ordinary skill recognized in the prosecution histories of the Asserted Patents and in the prior art of record.
E. Organization of Claim Charts
This Appendix is organized as follows:
• Section II presents the claim charts for the '847 Patent (U.S. Patent No. 10,234,847), covering Claims 1, 3, 5, 9, and 14, as asserted against the LumiLink 400G-ZR+ and LumiLink 800G-DR8.
• Section III presents the claim charts for the '193 Patent (U.S. Patent No. 10,891,193), covering Claims 1, 3, 7, 10, 15, and 18, as asserted against the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR. Literal infringement is asserted for all claims. For Claims 3 and 7, OWS also asserts infringement under the doctrine of equivalents; the function-way-result analysis for those claims is presented in the separate companion Appendix B.
• Section IV presents the claim charts for the '562 Patent (U.S. Patent No. 9,678,562), covering Claims 1, 4, 6, and 11, as asserted against the LumiLink 400G-ZR+ and LumiLink 800G-DR8.
• Section V presents the claim charts for the '015 Patent (U.S. Patent No. 11,402,015), covering Claims 1, 5, 8, 12, and 16, as asserted against the LumiLink 800G-DR8 and LumiEdge 1600G-LR. Literal infringement is asserted for all claims. For Claim 12, OWS also asserts infringement under the doctrine of equivalents; the function-way-result analysis for that claim is presented in the separate companion Appendix B.
Each claim chart in this Appendix identifies: (1) the full claim language for each limitation; (2) the corresponding structure, component, or method step identified in the accused product; (3) the specific evidentiary support, with references to teardown photographs (by exhibit number), design-file excerpts (by Bates range), and deposition testimony (by transcript page and line); and (4) Dr. Ashford's expert explanation of how the accused element meets the claim limitation under the applicable claim construction.
F. Note on Claim Constructions Applied
The following table summarizes the four key disputed claim terms and the constructions applied in this Appendix:
As discussed in the Main Report and as demonstrated in the individual claim charts below, Dr. Ashford opines that under either party's proposed construction for each of these terms, the accused products satisfy the corresponding claim limitation. Where Lumicore's narrower proposed construction introduces additional requirements, the claim charts specifically address whether those requirements are also met by the accused products. In each instance, Dr. Ashford concludes that they are, except as specifically noted for certain limitations where the analysis under Lumicore's construction requires additional factual development or where the doctrine of equivalents provides an alternative basis for infringement (as detailed in Appendix B).
The parties' Joint Claim Construction Statement, filed October 28, 2024 (Dkt. No. 63), identifies a total of fourteen (14) disputed claim terms across the four Asserted Patents. Of these, two (2) terms have been agreed upon by the parties subsequent to the filing of the Joint Statement, leaving twelve (12) terms in dispute for resolution by the Court. The four terms summarized in the table above represent the terms most central to the infringement analysis. The remaining disputed terms are addressed in the Main Report's claim construction section and are applied in the claim charts below as noted.
II. CLAIM CHARTS — U.S. PATENT NO. 10,234,847 ("THE '847 PATENT")
A. Patent Background Summary
Title: "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss"
Application No.: 15/265,421
Filing Date: September 14, 2016
Issue Date: March 19, 2019
Original Assignee: Optiwave Semiconductor Corp.
Current Assignee: Optiwave Semiconductor Corp.
Named Inventors: Dr. Jian-Wei Huang, Dr. Priya Ramaswamy, Dr. Tobias Kirchner, and Dr. Mei-Ling Chen
Patent Family Relationship: The '847 Patent is in the same patent family as the '562 Patent (U.S. Patent No. 9,678,562). Specifically, the application that issued as the '847 Patent is a continuation-in-part of the application that issued as the '562 Patent. Both patents share a common specification and disclosure relating to silicon photonic integrated circuit architectures and thermal management techniques, though the '847 Patent claims are directed to the optical multiplexer architecture while the '562 Patent claims are directed to the thermal management method.
Brief Description of the Invention: The '847 Patent describes and claims a multi-channel waveguide multiplexer architecture for silicon photonic platforms that achieves low insertion loss through a combination of specified structural features, including optimized waveguide geometry, adiabatic mode transitions, and a precisely engineered slab-coupler region. The multiplexer is designed to combine multiple optical signals of different wavelengths — typically four or more DWDM channels — onto a single output waveguide with insertion loss below specified thresholds. The patented architecture addresses a longstanding problem in silicon photonic design: the high propagation and coupling losses associated with conventional arrayed waveguide gratings when implemented on silicon-on-insulator (SOI) platforms with sub-micron waveguide dimensions. The '847 Patent specification describes several embodiments of the multiplexer architecture, including a four-channel, eight-channel, and sixteen-channel configuration, each incorporating the claimed structural features to achieve low insertion loss across the C-band (1530–1565 nm) and L-band (1565–1625 nm) telecommunications wavelength windows.
B. Accused Products for '847 Patent
The following Lumicore products are accused of infringing Claims 1, 3, 5, 9, and 14 of the '847 Patent:
• LumiLink 400G-ZR+ — accused of infringing Claims 1, 3, 5, 9, and 14
• LumiLink 800G-DR8 — accused of infringing Claims 1, 3, 5, 9, and 14
C. Claim Chart — Claim 1 (Independent) vs. LumiLink 400G-ZR+
Preamble.
Limitation 1[a] — Waveguide Multiplexer Structure
Limitation 1[b] — Multiple Optical Channels/Wavelengths
Limitation 1[c] — Silicon Substrate
Limitation 1[d] — Low Insertion Loss Feature
Limitation 1[e] — Waveguide Path Length Differential
D. Claim Chart — Claim 1 (Independent) vs. LumiLink 800G-DR8
E. Claim Chart — Claim 3 (Dependent on Claim 1) vs. LumiLink 400G-ZR+
Claim 3 of the '847 Patent depends from Claim 1 and recites: "The multi-channel silicon photonic waveguide multiplexer of claim 1, wherein the adiabatically tapered waveguide sections comprise a linear taper having a taper length of at least 10 µm and a taper ratio of at least 2:1 between a wider end and a narrower end of the taper."
F. Claim Chart — Claim 3 (Dependent on Claim 1) vs. LumiLink 800G-DR8
G. Claim Chart — Claim 5 (Dependent on Claim 1) vs. LumiLink 400G-ZR+
Claim 5 of the '847 Patent depends from Claim 1 and recites: "The multi-channel silicon photonic waveguide multiplexer of claim 1, further comprising a star coupler at an output end of the phased array, the star coupler having a Rowland circle geometry with a radius R selected to minimize focal-point aberration for each of the plurality of distinct wavelengths."
H. Claim Chart — Claim 5 (Dependent on Claim 1) vs. LumiLink 800G-DR8
I. Claim Chart — Claim 9 (Dependent) vs. LumiLink 400G-ZR+
Claim 9 of the '847 Patent depends from Claim 1 (through Claim 7) and recites: "The multi-channel silicon photonic waveguide multiplexer of claim 7, further comprising means for compensating phase errors in the phased array of waveguides caused by fabrication-induced variations in the waveguide width."
Note on Means-Plus-Function Construction: Claim 9 contains the term "means for compensating phase errors in the phased array of waveguides caused by fabrication-induced variations in the waveguide width," which is a means-plus-function limitation under 35 U.S.C. § 112(f), as identified in Calderwood & Harkness LLP's Means-Plus-Function Analysis Memorandum (October 5, 2024). Under § 112(f), this limitation is construed to cover the corresponding structure disclosed in the '847 Patent specification and equivalents thereof. The '847 Patent specification discloses the corresponding structure as "a set of thermo-optic phase shifters, each comprising a resistive heater element positioned adjacent to a respective waveguide in the phased array, the heater elements being individually addressable via a feedback control circuit that monitors the output power spectrum and adjusts the heater currents to compensate for phase errors." See '847 Patent, col. 8, ll. 22–45; col. 9, ll. 1–18; Figs. 5A–5C.
J. Claim Chart — Claim 9 (Dependent) vs. LumiLink 800G-DR8
K. Claim Chart — Claim 14 (Dependent on Claim 1) vs. LumiLink 400G-ZR+
Claim 14 of the '847 Patent depends from Claim 1 (through Claim 12) and recites: "The multi-channel silicon photonic waveguide multiplexer of claim 12, wherein the waveguide multiplexer further comprises at least one monitoring photodetector integrated on the silicon-on-insulator substrate and optically coupled to the output waveguide, the monitoring photodetector being configured to provide a feedback signal for controlling the thermo-optic phase shifters."
L. Claim Chart — Claim 14 vs. LumiLink 800G-DR8
M. Summary Table — '847 Patent Infringement Findings
Each finding of literal infringement is supported by the Benchmark teardown evidence, Lumicore design files and engineering specifications, deposition testimony, and Dr. Ashford's expert analysis as detailed in the claim charts above. All five asserted claims of the '847 Patent are literally infringed by both the LumiLink 400G-ZR+ and the LumiLink 800G-DR8.
III. CLAIM CHARTS — U.S. PATENT NO. 10,891,193 ("THE '193 PATENT")
A. Patent Background Summary
Title: "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate"
Application No.: 15/481,237
Filing Date: April 7, 2017
Issue Date: January 12, 2021
Original Assignee: Optiwave Semiconductor Corp.
Current Assignee: Optiwave Semiconductor Corp.
Named Inventors: Dr. Jian-Wei Huang, Dr. Priya Ramaswamy, and Dr. Aisha Okonkwo
Patent Family Relationship: The '193 Patent shares a common provisional application (Provisional Application No. 62/499,117, filed April 7, 2017) with the '015 Patent (U.S. Patent No. 11,402,015). The '193 Patent claims priority to this provisional application, and both patents draw from a common disclosure relating to integrated silicon photonic transceiver architectures, though the '193 Patent claims are directed to the coherent transceiver architecture while the '015 Patent claims are directed to the polarization-diverse grating coupler component.
Brief Description of the Invention: The '193 Patent describes and claims a coherent optical transceiver architecture integrated on a silicon substrate using specific design features to achieve high-bandwidth operation, including an integrated coherent receiver with balanced photodetectors, a local-oscillator laser coupled on-chip, and a transmitter section employing nested Mach-Zehnder modulators for dual-polarization quadrature phase-shift keying (DP-QPSK) modulation. The patent addresses challenges in integrating all of these functional blocks on a single silicon photonic platform while maintaining the signal integrity and bandwidth required for coherent optical communication at 400 Gbps and beyond.
B. Accused Products for '193 Patent
The following Lumicore products are accused of infringing Claims 1, 3, 7, 10, 15, and 18 of the '193 Patent:
• LumiLink 400G-ZR+ — accused of infringing Claims 1, 3, 7, 10, 15, and 18
• LumiLink 800G-DR8 — accused of infringing Claims 1, 3, 7, 10, 15, and 18
• LumiEdge 1600G-LR — accused of infringing Claims 1, 3, 7, 10, 15, and 18
C. Claim Chart — Claim 1 (Independent) vs. LumiLink 400G-ZR+
Preamble.
Limitation 1[a] — Coherent Optical Transceiver
Limitation 1[b] — "Integrated on a Silicon Substrate"
Limitation 1[c] — High-Bandwidth Specification
Limitation 1[d] — Coherent Detection Module
Limitation 1[e] — Polarization Handling
D. Claim Chart — Claim 1 (Independent) vs. LumiLink 800G-DR8
The LumiLink 800G-DR8, although primarily an intensity-modulated direct-detection (IM-DD) transceiver, incorporates a coherent optical engine for certain operating modes and for forward-error-correction-assisted equalization. The Benchmark teardown (Exhibit OWS-2001 at pp. 50–65) identifies a coherent receiver subsystem on the 800G-DR8 PIC that includes the functional blocks recited in Claim 1 of the '193 Patent.
Dr. Ashford's analysis confirms that each limitation of Claim 1 is literally met by the LumiLink 800G-DR8 for the same reasons as discussed in detail for the LumiLink 400G-ZR+ in Section III.C above, with the specific teardown evidence and design-file references updated to reflect the 800G-DR8 product.
E. Claim Chart — Claim 1 (Independent) vs. LumiEdge 1600G-LR
The LumiEdge 1600G-LR, launched in Q4 2023 after both FairPoint IP Solutions licensing letters (January 15, 2023 and May 15, 2023), incorporates a silicon photonic coherent transceiver engine for its 1.6 Tbps operation.
Note: The LumiEdge 1600G-LR was launched after all pre-suit notice. This fact is relevant to the willfulness analysis presented in the Main Report and is noted here for completeness.
F. Claim Chart — Claim 3 (Dependent on Claim 1) — Literal Infringement vs. Each Accused Product
Claim 3 of the '193 Patent depends from Claim 1 and recites: "The coherent optical transceiver of claim 1, wherein the coherent detection module further comprises a transimpedance amplifier array monolithically integrated with the balanced photodetectors on the silicon substrate."
G. Claim Chart — Claim 7 (Dependent) — Literal Infringement vs. Each Accused Product
Claim 7 of the '193 Patent depends from Claim 1 (through Claim 5) and recites: "The coherent optical transceiver of claim 5, wherein the coherent detection module further comprises a digital signal processor (DSP) co-integrated on the silicon substrate with the coherent optical receiver, the DSP being configured to perform chromatic dispersion compensation and carrier recovery."
H. Claim Chart — Claim 10 (Dependent) vs. Each Accused Product
Claim 10 of the '193 Patent depends from Claim 1 and recites: "The coherent optical transceiver of claim 1, wherein the at least one nested Mach-Zehnder modulator comprises two parallel child Mach-Zehnder interferometers nested within a parent Mach-Zehnder interferometer, with a 90° phase bias applied between the child interferometers for IQ modulation."
I. Claim Chart — Claim 15 (Dependent) vs. Each Accused Product
Claim 15 of the '193 Patent depends from Claim 1 (through Claim 13) and recites: "The coherent optical transceiver of claim 13, further comprising means for stabilizing the wavelength of the local oscillator laser source to within ±50 pm of a target wavelength."
Note on Means-Plus-Function Construction: Claim 15 contains the term "means for stabilizing the wavelength of the local oscillator laser source," which is a means-plus-function limitation under 35 U.S.C. § 112(f), as identified in Calderwood & Harkness LLP's Means-Plus-Function Analysis Memorandum (October 5, 2024). The corresponding structure disclosed in the '193 Patent specification is "a wavelength locker comprising a Fabry-Pérot etalon filter and a pair of monitoring photodetectors connected to a feedback control loop that adjusts the laser temperature and/or current to maintain the laser wavelength within ±50 pm of the target." See '193 Patent, col. 12, ll. 30–55; Figs. 8A–8B.
J. Claim Chart — Claim 18 (Dependent) vs. Each Accused Product
Claim 18 of the '193 Patent depends from Claim 1 (through Claim 16) and recites: "The coherent optical transceiver of claim 16, wherein the silicon substrate comprises a silicon-on-insulator wafer having a silicon device layer thickness between 200 nm and 340 nm."
K. Summary Table — '193 Patent Infringement Findings
*DOE = Doctrine of equivalents analysis presented in companion Appendix B for the "coherent detection module" and "co-integrated" limitations as narrowed in Claims 3 and 7.
IV. CLAIM CHARTS — U.S. PATENT NO. 9,678,562 ("THE '562 PATENT")
A. Patent Background Summary
Title: "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks"
Application No.: 14/551,089
Filing Date: November 22, 2014
Issue Date: June 13, 2017
Original Assignee: Solara Optics, Inc.
Current Assignee: Optiwave Semiconductor Corp. The '562 Patent was originally assigned to Solara Optics, Inc. and was subsequently assigned to Optiwave Semiconductor Corp. pursuant to an Asset Purchase Agreement dated June 15, 2018, in which OWS acquired a portfolio of twelve patents from Solara Optics for a total consideration of $34.5 million. The '562 Patent was among the twelve patents acquired in that transaction, as confirmed by the recorded assignment at the USPTO (Reel/Frame 046892/0312).
Named Inventors: Dr. Henrik Johansson, Dr. Amir Patel, and Dr. Yuki Tanaka
Patent Family Relationship: The '562 Patent is in the same patent family as the '847 Patent (U.S. Patent No. 10,234,847). Specifically, the application that issued as the '847 Patent is a continuation-in-part of the application that issued as the '562 Patent, sharing a common specification regarding silicon photonic integrated circuit architectures. The '562 Patent claims are directed to a method for thermal management using embedded micro-channel heat sinks, while the '847 Patent claims are directed to the optical multiplexer architecture.
Brief Description of the Invention: The '562 Patent describes and claims a method for thermal management of photonic integrated circuits using embedded micro-channel heat sinks with specified structural and dimensional parameters. The invention addresses the critical thermal management challenges facing high-power-density silicon photonic ICs, where localized heating from laser sources, modulators, and other active components can degrade optical performance (wavelength drift, increased dark current, reduced modulator extinction ratio) and reduce device reliability. The patented method involves fabricating micro-channel structures within or adjacent to the PIC substrate, the channels having a hydraulic diameter of less than 1 mm, and flowing a coolant through the channels to remove heat from the PIC during operation.
B. Accused Products for '562 Patent
The following Lumicore products are accused of infringing Claims 1, 4, 6, and 11 of the '562 Patent:
• LumiLink 400G-ZR+ — accused of infringing Claims 1, 4, 6, and 11
• LumiLink 800G-DR8 — accused of infringing Claims 1, 4, 6, and 11
C. Claim Chart — Claim 1 (Independent) vs. LumiLink 400G-ZR+
Preamble.
Limitation 1[a] — Photonic Integrated Circuit
Limitation 1[b] — Embedded Micro-Channel Heat Sink
Limitation 1[c] — Thermal Management Method Steps
Limitation 1[d] — Heat Sink Positioning
D. Claim Chart — Claim 1 (Independent) vs. LumiLink 800G-DR8
E. Claim Chart — Claim 4 (Dependent on Claim 1) vs. LumiLink 400G-ZR+
Claim 4 of the '562 Patent depends from Claim 1 and recites: "The method of claim 1, wherein the plurality of channels have a width between 20 µm and 100 µm and a depth between 100 µm and 500 µm."
F. Claim Chart — Claim 4 vs. LumiLink 800G-DR8
G. Claim Chart — Claim 6 (Dependent) vs. LumiLink 400G-ZR+
Claim 6 of the '562 Patent depends from Claim 1 (through Claim 5) and recites: "The method of claim 5, wherein the coolant comprises a dielectric fluid having a thermal conductivity of at least 0.05 W/m·K and an electrical resistivity of at least 10^8 Ω·cm."
H. Claim Chart — Claim 6 vs. LumiLink 800G-DR8
I. Claim Chart — Claim 11 (Dependent) vs. LumiLink 400G-ZR+
Claim 11 of the '562 Patent depends from Claim 1 (through Claim 8) and recites: "The method of claim 8, further comprising monitoring a temperature of the photonic integrated circuit using at least one on-chip temperature sensor and adjusting a flow rate of the coolant based on the monitored temperature."
J. Claim Chart — Claim 11 vs. LumiLink 800G-DR8
K. Summary Table — '562 Patent Infringement Findings
Note on Strength of Infringement Case: The infringement case for the '562 Patent is particularly strong based on the clarity and directness of the evidence. The Benchmark teardown photographs provide unambiguous visual confirmation of the micro-channel heat-sink structures. The Benchmark dimensional measurements confirm compliance with the claimed channel dimension ranges. The Lumicore design documents specify the coolant type and thermal management architecture. And Dr. Michaud's deposition admissions regarding the design choices — including her use of the phrases "closed-loop micro-channel cooling system" and "thermal feedback control" — directly parallel the claim language. OWS anticipates moving for partial summary judgment on infringement of Claims 1, 4, and 6 based on this evidence.
V. CLAIM CHARTS — U.S. PATENT NO. 11,402,015 ("THE '015 PATENT")
A. Patent Background Summary
Title: "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers"
Application No.: 16/556,812
Filing Date: August 30, 2019
Issue Date: August 2, 2022
Original Assignee: Optiwave Semiconductor Corp.
Current Assignee: Optiwave Semiconductor Corp.
Named Inventors: Dr. Jian-Wei Huang, Dr. Aisha Okonkwo, and Dr. Marcus Lindström
Patent Family Relationship: The '015 Patent shares a common provisional application (Provisional Application No. 62/499,117, filed April 7, 2017) with the '193 Patent (U.S. Patent No. 10,891,193). Both patents draw from a common disclosure, though the '015 Patent claims are specifically directed to a polarization-diverse grating coupler component for silicon photonic transceivers, while the '193 Patent claims are directed to the broader coherent transceiver architecture.
Brief Description of the Invention: The '015 Patent describes and claims a polarization-diverse grating coupler design for silicon photonic transceivers with specific structural features enabling coupling of light in two orthogonal polarization states (TE and TM). The patented grating coupler addresses the fundamental challenge of polarization-dependent coupling efficiency in silicon photonic devices, where conventional one-dimensional grating couplers are inherently polarization-sensitive and couple only one polarization state efficiently. The '015 Patent discloses a two-dimensional grating structure with sub-wavelength features that enables simultaneous coupling of both TE and TM polarization modes from a single-mode fiber into the silicon photonic chip, eliminating the need for external polarization-diversity optics and enabling fully integrated polarization-diverse receivers.
B. Accused Products for '015 Patent
The following Lumicore products are accused of infringing Claims 1, 5, 8, 12, and 16 of the '015 Patent:
• LumiLink 800G-DR8 — accused of infringing Claims 1, 5, 8, 12, and 16
• LumiEdge 1600G-LR — accused of infringing Claims 1, 5, 8, 12, and 16
C. Claim Chart — Claim 1 (Independent) vs. LumiLink 800G-DR8
Preamble.
Limitation 1[a] — Polarization-Diverse Grating Coupler
Limitation 1[b] — Silicon Photonic Transceiver Context
Limitation 1[c] — Output Waveguides for TE and TM
| "a first output waveguide configured to receive light coupled in the TE polarization mode and a second output waveguide configured to receive light coupled in the TM polarization mode, the first and second output waveguides being separate waveguide paths on the silicon-on-insulator substrate."
Limitation 1[d] — Coupling Efficiency Specification
Note on Claim 12 — "Two-Dimensional Sub-Wavelength Grating" (Contextual Reference)
For Claim 1, the literal claim limitations are fully mapped above and do not include the "two-dimensional sub-wavelength grating" limitation, which appears in dependent Claim 12. However, it is noted here for context that Claim 12 adds a requirement for a "two-dimensional sub-wavelength grating" overlaid on or adjacent to the primary grating structure, and that for Claim 12, OWS asserts both literal infringement and infringement under the doctrine of equivalents. The "two-dimensional sub-wavelength grating" limitation was the subject of a narrowing amendment during prosecution of the '015 Patent to overcome a § 103 rejection combining Bergmann (U.S. Patent No. 8,412,007) with Simonsen (PCT/EP2015/071234). The prosecution history estoppel implications of this amendment are analyzed in the Main Report and in Appendix B.
D. Claim Chart — Claim 1 (Independent) vs. LumiEdge 1600G-LR
Dr. Ashford's analysis confirms that each limitation of Claim 1 is literally met by the LumiEdge 1600G-LR for the same reasons as discussed in detail for the LumiLink 800G-DR8 in Section V.C, with the specific teardown evidence and design-file references updated to reflect the 1600G-LR product.
E. Claim Chart — Claim 5 (Dependent) vs. LumiLink 800G-DR8
Claim 5 of the '015 Patent depends from Claim 1 (through Claim 3) and recites: "The polarization-diverse grating coupler of claim 3, wherein the two-dimensional periodic pattern comprises a square lattice of cylindrical holes etched into the silicon device layer, the cylindrical holes having a diameter between 150 nm and 450 nm and a depth between 50 nm and 220 nm."
F. Claim Chart — Claim 5 vs. LumiEdge 1600G-LR
G. Claim Chart — Claim 8 (Dependent) vs. LumiLink 800G-DR8
Claim 8 of the '015 Patent depends from Claim 1 (through Claim 6) and recites: "The polarization-diverse grating coupler of claim 6, further comprising a bottom reflector layer disposed beneath the grating structure, the bottom reflector layer comprising a metal layer or a distributed Bragg reflector configured to increase the directionality of the grating coupler."
H. Claim Chart — Claim 8 vs. LumiEdge 1600G-LR
I. Claim Chart — Claim 12 (Dependent) — Literal Infringement vs. LumiLink 800G-DR8
Claim 12 of the '015 Patent depends from Claim 1 (through Claim 10) and recites: "The polarization-diverse grating coupler of claim 10, further comprising a two-dimensional sub-wavelength grating region adjacent to the two-dimensional periodic pattern, the sub-wavelength grating region having feature sizes smaller than one-half of the design wavelength and configured to suppress back-reflections at the boundary of the grating coupler."
J. Claim Chart — Claim 12 — Literal Infringement vs. LumiEdge 1600G-LR
K. Claim Chart — Claim 16 (Dependent) vs. LumiLink 800G-DR8
Claim 16 of the '015 Patent depends from Claim 1 (through Claim 14) and recites: "The polarization-diverse grating coupler of claim 14, wherein the grating coupler further comprises an apodized grating profile in which the duty cycle of the grating features varies across the grating aperture to shape the near-field radiation pattern for improved mode matching with a single-mode fiber."
L. Claim Chart — Claim 16 vs. LumiEdge 1600G-LR