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INFRINGEMENT CLAIM CHART

U.S. PATENT NO. 11,402,015

"Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers"

Claims 1, 5, 8, 12, and 16

SUBJECT TO STIPULATED PROTECTIVE ORDER — PORTIONS REFERENCING LUMICORE DESIGN FILES AND INTERNAL DOCUMENTS DESIGNATED HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY OR HIGHLY CONFIDENTIAL — SOURCE CODE

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

OPTIWAVE SEMICONDUCTOR CORP., Plaintiff,

LUMICORE TECHNOLOGIES, INC., Defendant.

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

Before the Honorable Judge James R. Gilstrap

Filed As: Exhibit to P.R. 3-1 Infringement Contentions

Date: September 16, 2024

Prepared By:

Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071

Alan Ngo, Responsible Partner Wendy Schultz, Lead Associate Omar Siddiqui, Working Associate

On behalf of Plaintiff Optiwave Semiconductor Corp. 4810 Bayside Technology Parkway, Suite 300 Santa Clara, CA 95054

Local Counsel:

Whitmore & Callahan LLP 110 North College Avenue, Suite 800 Tyler, TX 75702 James "Jim" Callahan

CONFIDENTIALITY DESIGNATION: This document and the appendices referenced herein are subject to the Stipulated Protective Order entered in this matter (D.E. 18, July 5, 2024). Portions of this claim chart reference and incorporate by reference Lumicore Technologies, Inc. design files, engineering specifications, and internal documents designated HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY and HIGHLY CONFIDENTIAL — SOURCE CODE. Those portions, and the corresponding appendix materials, are to be treated in accordance with the terms of the Stipulated Protective Order and may not be disclosed to any person not authorized to receive such materials under the applicable designation tier.

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I. INTRODUCTION AND OVERVIEW

A. Purpose of This Claim Chart

This claim chart is served as part of Optiwave Semiconductor Corp.'s ("OWS" or "Plaintiff") P.R. 3-1 Infringement Contentions pursuant to the Court's Scheduling Order (D.E. 27, entered August 12, 2024) and the Patent Rules for the Eastern District of Texas. The chart is intended to provide Lumicore Technologies, Inc. ("Lumicore" or "Defendant") with notice of the specific bases for OWS's infringement allegations in a claim-by-claim, limitation-by-limitation manner, as required by P.R. 3-1(b).

Specifically, this chart identifies, on a claim-by-claim, limitation-by-limitation basis, the specific basis for OWS's contention that Lumicore's accused products — the LumiLink 800G-DR8 and the LumiEdge 1600G-LR — infringe asserted Claims 1, 5, 8, 12, and 16 of U.S. Patent No. 11,402,015 (the "'015 Patent"). For each limitation of each asserted claim, this chart identifies the corresponding element or structure in the accused products that practices the limitation, together with specific citations to supporting evidence including product teardown reports, Lumicore's own design documentation produced in discovery, deposition testimony, product datasheets, and publicly available technical literature.

OWS contends that each accused product infringes the identified claims both literally and, with respect to Claim 12, under the doctrine of equivalents. The doctrine of equivalents theory for Claim 12 is set forth in detail in Section VI.B of this chart, together with an analysis of prosecution history estoppel under the framework established by Festo Corp. v. Fenmore & Co., 535 U.S. 722 (2002).

B. The '015 Patent

The asserted patent is U.S. Patent No. 11,402,015, entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers" (the "'015 Patent"). The relevant bibliographic and prosecution details of the '015 Patent are as follows:

• Patent Number: U.S. Patent No. 11,402,015

• Full Title: Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers

• Filing Date: August 30, 2019

• Issue Date: August 2, 2022

• Current Assignee: Optiwave Semiconductor Corp., Santa Clara, California

• Priority: The '015 Patent claims the benefit of U.S. Provisional Application No. 62/499,117, filed April 7, 2017

• Related Patents: The '015 Patent shares a common provisional application (U.S. Provisional Application No. 62/499,117) with U.S. Patent No. 10,891,193 (the "'193 Patent"), which is also asserted in this action

• Maintenance Fees: All maintenance fees for the '015 Patent are current and have been timely paid

• Prosecuting Attorney: The '015 Patent was prosecuted before the United States Patent and Trademark Office by Dr. Martin Chu of Cascade IP Advisors, LLC, 1550 Crystal Drive, Suite 600, Arlington, VA 22202

• Named Inventors: Dr. Jian-Wei Huang, Chief Technology Officer of OWS, and Dr. Nikolai Petrov, Vice President of Engineering, Photonics Division of OWS

• Inter Partes Review Status: No petitions for inter partes review ("IPR") have been filed against any claims of the '015 Patent as of the date of this filing, and the one-year statutory bar under 35 U.S.C. § 315(b) has expired as to Lumicore given the date of service of the Complaint in this action

The '015 Patent generally relates to a silicon photonic transceiver module incorporating a polarization-diverse grating coupler that efficiently couples optical signals from an optical fiber into a photonic integrated circuit while accommodating both orthogonal polarization states (TE and TM). The specification discloses that conventional grating couplers suffer from polarization-dependent loss, which degrades system performance in coherent optical communication systems. The '015 Patent addresses this problem through a grating coupler architecture that includes distinct grating regions configured to couple each polarization component into separate on-chip waveguides, enabling downstream coherent processing of both polarization channels.

C. Accused Products

OWS accuses the following two Lumicore products of infringing Claims 1, 5, 8, 12, and 16 of the '015 Patent:

1. LumiLink 800G-DR8. The LumiLink 800G-DR8 is a silicon-photonic transceiver module designed for 800 Gigabit Ethernet data-center interconnect applications. The product was launched commercially by Lumicore in the first quarter of 2023. Based on Lumicore's public financial disclosures and segment-level reporting, the LumiLink 800G-DR8 generated approximately $128.4 million in revenue during fiscal year 2023. The product is marketed for hyperscale data-center and cloud-service-provider applications, and Lumicore's published datasheets describe it as leveraging "advanced silicon photonic integration" for high-density, low-power optical connectivity.

2. LumiEdge 1600G-LR. The LumiEdge 1600G-LR is a silicon-photonic transceiver module designed for 1.6 Terabit long-reach interconnect applications in both data-center and telecommunications environments. The product was launched commercially by Lumicore in the fourth quarter of 2023. Based on Lumicore's public financial disclosures, the LumiEdge 1600G-LR generated approximately $41.7 million in revenue during the portion of fiscal year 2023 following its launch, and revenue has continued to grow in subsequent quarters. The product is marketed as Lumicore's next-generation coherent transceiver platform.

Both accused products are silicon-photonic transceiver modules designed for hyperscale data-center and telecom interconnect applications. Both products incorporate photonic integrated circuits fabricated using silicon-on-insulator processes and include polarization-diverse grating coupler structures, polarization rotators, sub-wavelength grating features, and integrated coherent receiver circuits, as detailed in the claim charts that follow.

The accused products are manufactured, used, sold, offered for sale, and/or imported into the United States by Lumicore Technologies, Inc., a Delaware corporation headquartered at 9200 Spectrum Boulevard, Building C, Austin, TX 78759. Lumicore also maintains a sales and technical support office within this judicial district at 2700 Earl Campbell Parkway, Suite 150, Tyler, TX 75701. Accused products have been sold to customers within the Eastern District of Texas, including but not limited to Pinnacle Data Systems, LLC (Longview, TX), Frontier Cloud Services, Inc. (Marshall, TX), and CrossPoint Networking Corp. (Plano, TX). OWS's jurisdictional and venue allegations are set forth in detail in the Complaint (D.E. 1).

D. Sources of Evidence

The infringement contentions set forth in this claim chart are based on, and supported by, the following categories of evidence:

Benchmark Semiconductor Analysis, LLC Teardown Reports. OWS commissioned Benchmark Semiconductor Analysis, LLC ("Benchmark"), an independent semiconductor and photonics device analysis firm located at 2244 Mission College Boulevard, Santa Clara, CA 95054, to perform detailed physical teardown analyses of both accused products. The teardown analyses were conducted by Lead Engineer Kevin Ng and include optical inspection, scanning electron microscopy ("SEM"), cross-sectional imaging, energy-dispersive X-ray spectroscopy ("EDS"), and dimensional metrology of the relevant photonic integrated circuit structures within each accused product.

• The LumiLink 800G-DR8 teardown was completed in June 2023 and is documented in a comprehensive written report with annotated photographs and SEM images.

• The LumiEdge 1600G-LR teardown was completed in February 2024 and is documented in a similar report.

• Kevin Ng was deposed on January 7, 2025, and provided testimony confirming the teardown methodology, chain of custody for the examined samples, calibration of measurement equipment, and identification of specific structures within the accused products that correspond to claim limitations of the '015 Patent.

Lumicore Design Documents Produced in discovery. Lumicore has produced in this litigation design documents, including photonic-IC layout files, CAD schematics, grating design parameter files, engineering specifications, design rule documents, and related technical documentation for the LumiLink 800G-DR8 and LumiEdge 1600G-LR. These documents were produced pursuant to the parties' agreed-upon ESI protocol and are designated Highly Confidential — Attorneys' Eyes Only and, in certain instances, Highly Confidential — Source Code under the Stipulated Protective Order. Citations to these documents in this claim chart use the format "[LTC-PROD-xxxxxx]" followed by Bates number references.

Lumicore Product Datasheets and Marketing Materials. OWS relies on publicly available product datasheets, application notes, white papers, and marketing materials for the LumiLink 800G-DR8 and LumiEdge 1600G-LR, as well as versions of these documents produced in discovery that contain additional technical detail not included in the public versions.

Deposition Testimony. OWS relies on the deposition testimony of Dr. Sandra Michaud, Lumicore's Chief Technology Officer, taken on November 19, 2024. Dr. Michaud provided testimony regarding Lumicore's product architecture, design process, and the technical characteristics of the accused products, including the grating coupler structures at issue. OWS also relies on the deposition testimony of Kevin Ng, referenced above.

Published Technical Literature and IEEE Standards. OWS relies on published technical literature in the field of silicon photonics and grating coupler design, as well as IEEE standards referenced in the accused products' specifications (including IEEE 802.3bs and IEEE 802.3ck), to the extent they bear on the interpretation or application of the asserted claim limitations.

Reservation of Right to Supplement. OWS reserves the right to supplement this claim chart as additional discovery becomes available, including without limitation supplemental Lumicore design files, RTL schematics, and source-code review results. OWS anticipates filing supplemental infringement contentions in April 2025, following completion of source-code review and additional document productions.

E. Claim Construction Positions

This claim chart applies OWS's proposed claim constructions as set forth in the Joint Claim Construction Statement filed October 28, 2024 (D.E. 40), and as briefed in OWS's Opening Claim Construction Brief (D.E. 44, filed November 15, 2024) and Reply Claim Construction Brief (D.E. 52, filed December 20, 2024).

The parties have identified 14 disputed claim terms for construction across the asserted claims of the '015 Patent and the related '193 Patent. For purposes of this claim chart, the most significant disputed term is "polarization-diverse grating coupler," which appears in Claims 1, 5, 8, 12, and 16 of the '015 Patent. The parties' competing constructions for this term are as follows:

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

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

As demonstrated in the claim charts below, OWS contends that infringement is established under either party's proposed construction of "polarization-diverse grating coupler." OWS further contends that Lumicore's proposed construction improperly imports limitations from preferred embodiments described in the specification and is inconsistent with the intrinsic evidence, as argued in OWS's claim construction briefing. However, even accepting Lumicore's narrower proposed construction arguendo, the accused products satisfy every element of the disputed term, as the evidence demonstrates that the grating couplers in the LumiLink 800G-DR8 and LumiEdge 1600G-LR are two-dimensional grating couplers with polarization-splitting elements that simultaneously couple TE and TM modes.

The Markman hearing on all 14 disputed terms is scheduled for March 14, 2025 before the Honorable Judge James R. Gilstrap. OWS reserves the right to update this claim chart following the Court's claim construction order to conform the infringement contentions to the Court's constructions.

F. Infringement Theories

OWS asserts the following infringement theories with respect to the asserted claims of the '015 Patent:

Literal Infringement. OWS asserts literal infringement of Claims 1, 5, 8, and 16 of the '015 Patent by both the LumiLink 800G-DR8 and the LumiEdge 1600G-LR. For each of these claims, OWS contends that every limitation is literally present in the accused products.

Literal Infringement and Doctrine of Equivalents. OWS asserts literal infringement of Claim 12 of the '015 Patent by both accused products and, in the alternative, infringement under the doctrine of equivalents. The doctrine of equivalents theory for Claim 12 specifically addresses the "two-dimensional sub-wavelength grating" limitation. OWS contends that, even if the Court determines that Lumicore's accused grating structures do not literally satisfy this limitation (for example, under a narrow construction of "two-dimensional" that the accused structures might not meet), the accused element performs substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed two-dimensional sub-wavelength grating element.

OWS's prosecution history estoppel analysis for Claim 12 — referencing the narrowing amendment made during prosecution of the '015 Patent to overcome a § 103 rejection combining U.S. Patent No. 8,412,007 (Bergmann) with PCT/EP2015/071234 (Simonsen) — is addressed in detail in Section VI.B below. OWS contends that the Festo exception for tangential relation applies and that the doctrine of equivalents has not been foreclosed for this limitation. A comprehensive analysis is also provided in OWS's separate Doctrine of Equivalents Analysis Memorandum (dated September 5, 2024) and Prosecution History Estoppel Analysis — '015 Patent (dated October 12, 2024).

II. CLAIM CHART FORMAT AND CONVENTIONS

The claim charts set forth in Sections III through VII of this document use a two-column format as follows:

• Left Column — Claim Language: Contains the exact claim language of each limitation of the asserted claims, broken out on a limitation-by-limitation basis. Claim elements are identified using the notation "Limitation 1[a]," "Limitation 1[b]," etc.

• Right Column — Accused Products / Evidence: Contains the identification of how each accused product meets the corresponding limitation, together with citations to specific evidence supporting OWS's infringement contentions.

The following additional conventions are employed throughout the claim charts:

• Where a limitation is met identically or in substantially similar fashion by both accused products (the LumiLink 800G-DR8 and the LumiEdge 1600G-LR), a combined entry is provided referencing both products. Where material differences exist between the products with respect to a given limitation, separate entries are provided for each product.

• Citations to Benchmark teardown reports are provided in the format [Benchmark-800G-DR8-xxx] or [Benchmark-1600G-LR-xxx], where "xxx" refers to the page number of the report, followed by a figure reference (e.g., "Fig. 3") where applicable.

• Citations to Lumicore documents produced in discovery are provided in the format [LTC-PROD-xxxxxx], where "xxxxxx" refers to the Bates-stamped production number. Where a range of Bates numbers is cited, the format [LTC-PROD-xxxxxx through LTC-PROD-xxxxxx] is used.

• Citations to deposition testimony are provided in the format [Witness Name Dep. Tr. at xx:xx–xx:xx], identifying the witness, the deposition transcript, and the page and line numbers.

• The annotations [LITERAL] and [DOE] are used to distinguish between literal infringement and doctrine of equivalents theories where both theories are asserted for a given limitation. Where only literal infringement is asserted, the [LITERAL] annotation may be omitted for clarity.

• Photographs and SEM images from the Benchmark teardown reports are referenced by figure number. Physical annotations identifying specific structures within those images are described in the claim chart text and are further documented in Appendices 1 and 2 (annotated teardown photographs, separately bound).

• All claim language is quoted verbatim from U.S. Patent No. 11,402,015 as issued.

III. CLAIM 1 — INDEPENDENT CLAIM (LITERAL INFRINGEMENT)

Claim 1 of the '015 Patent is an independent claim. OWS contends that both the LumiLink 800G-DR8 and the LumiEdge 1600G-LR literally infringe every limitation of Claim 1. The following chart sets forth OWS's infringement contentions on a limitation-by-limitation basis.

Preamble

Limitation 1[a]

Limitation 1[b]

Limitation 1[c]

Limitation 1[d]

Summary — Claim 1: Every limitation of Claim 1 of the '015 Patent is literally met by both the LumiLink 800G-DR8 and the LumiEdge 1600G-LR. The accused products are silicon photonic transceiver modules comprising a photonic integrated circuit formed on a silicon substrate, a polarization-diverse grating coupler disposed on the PIC that couples an input optical signal into the PIC, wherein the grating coupler comprises first and second grating regions configured to couple orthogonal polarization components, and first and second waveguides optically connected to the respective grating regions to receive the respective polarization components.

IV. CLAIM 5 — DEPENDENT CLAIM (LITERAL INFRINGEMENT)

Dependency

Claim 5 depends from Claim 1 and incorporates all limitations of Claim 1. All elements of Claim 1 are met by both accused products as described in Section III above. The additional limitation of Claim 5 is addressed below.

Additional Limitation of Claim 5

Summary — Claim 5: The additional limitation of Claim 5 is literally met by both the LumiLink 800G-DR8 and the LumiEdge 1600G-LR. Both accused products include a polarization rotator element on the PIC that rotates the TM-mode polarization component into the TE mode, such that both polarization components propagate in the same polarization mode (TE) in their respective waveguides for downstream coherent processing.

V. CLAIM 8 — DEPENDENT CLAIM (LITERAL INFRINGEMENT)

Dependency

Claim 8 depends from Claim 1 and incorporates all limitations of Claim 1. All elements of Claim 1 are met by both accused products as described in Section III above. The additional limitation of Claim 8 is addressed below.

Additional Limitation of Claim 8

Summary — Claim 8: The additional limitation of Claim 8 is literally met by both the LumiLink 800G-DR8 and the LumiEdge 1600G-LR. Both accused products incorporate grating couplers with sub-wavelength grating structures having pitches (approximately 480 nm and 470 nm, respectively) that are smaller than the C-band operating wavelength of approximately 1550 nm.

VI. CLAIM 12 — DEPENDENT CLAIM (LITERAL INFRINGEMENT AND DOCTRINE OF EQUIVALENTS)

Dependency

Claim 12 depends from Claim 8, which in turn depends from Claim 1. All elements of Claims 1 and 8 are incorporated and met by both accused products as described in Sections III and V above. The additional limitation of Claim 12, and OWS's dual theories of literal infringement and doctrine of equivalents, are addressed below.

Additional Limitation of Claim 12

A. Literal Infringement Analysis

[LITERAL]

OWS contends that the sub-wavelength grating structures in both accused products are "two-dimensional sub-wavelength gratings having periodic features in two orthogonal in-plane directions" within the meaning of Claim 12. The evidence supporting this contention is as follows:

Benchmark SEM Evidence — LumiLink 800G-DR8: Benchmark's top-down SEM images of the grating coupler in the LumiLink 800G-DR8 reveal a periodic structure with features arranged in a two-dimensional pattern. The SEM images show a grid-like arrangement of grating features — specifically, periodic holes or pillars (depending on the etch polarity) arranged with periodicity in both the x-direction and the y-direction on the plane of the PIC. The periodicity in both in-plane directions is visible at multiple magnifications and is confirmed by Fourier-transform analysis of the SEM images, which shows distinct spatial frequency peaks corresponding to two orthogonal in-plane periodicities. [Benchmark-800G-DR8-021, Fig. 10(b) (annotated top-down SEM showing bidirectional periodicity; inset shows FFT spectrum with two orthogonal frequency peaks); Benchmark-800G-DR8-021, Fig. 10(c) (higher-magnification SEM showing individual grating elements in grid arrangement).]

Benchmark SEM Evidence — LumiEdge 1600G-LR: Similar two-dimensional periodic features are observed in the grating coupler of the LumiEdge 1600G-LR. [Benchmark-1600G-LR-017, Fig. 9(b) (annotated top-down SEM showing bidirectional periodicity in the LumiEdge grating coupler); Benchmark-1600G-LR-017, Fig. 9(c) (higher-magnification SEM).] The grating geometry in the LumiEdge product is substantially similar to that of the LumiLink product, with periodic features in two orthogonal in-plane directions, though the specific pitch values and feature dimensions may differ slightly between the two products to account for differences in the products' coupling specifications.

Lumicore Design Documentation: Lumicore's design files describe the grating coupler geometry using design parameters for both in-plane directions, including separate pitch values (designated "Λx" and "Λy" in the design database), duty cycle values, and etch depth specifications for each direction. [LTC-PROD-049410 (grating design parameter table with columns for x-direction and y-direction parameters); LTC-PROD-049412 (CAD layout showing two-dimensional array of grating features with annotations).] This two-axis parameterization is consistent with and confirms that the grating is a two-dimensional structure with periodic features in two orthogonal in-plane directions.

Summary of Literal Infringement — Claim 12: OWS contends that the sub-wavelength grating structures in both accused products literally satisfy the "two-dimensional sub-wavelength grating having periodic features in two orthogonal in-plane directions" limitation. The physical evidence (SEM imaging) and Lumicore's own design files demonstrate that the grating features are arranged with periodicity in two orthogonal in-plane directions (x and y), constituting a two-dimensional sub-wavelength grating.

B. Doctrine of Equivalents Analysis (Alternative Theory for Claim 12)

[DOE]

In the alternative, and without waiving its literal infringement theory, OWS contends that, even if the Court determines that Lumicore's accused grating structures do not literally satisfy the "two-dimensional sub-wavelength grating" limitation of Claim 12, the accused structures infringe under the doctrine of equivalents.

1. Background — Prosecution History

During prosecution of the '015 Patent before the United States Patent and Trademark Office, the Examiner issued a final office action rejecting then-pending Claim 12 under 35 U.S.C. § 103 as obvious over U.S. Patent No. 8,412,007 (Bergmann) in combination with International Publication No. PCT/EP2015/071234 (Simonsen). The Bergmann reference disclosed a one-dimensional sub-wavelength grating coupler for silicon photonic applications, and the Simonsen reference disclosed a polarization-splitting grating coupler architecture. The Examiner reasoned that a person of ordinary skill in the art would have been motivated to combine Bergmann's one-dimensional sub-wavelength grating with Simonsen's polarization-splitting architecture to arrive at the claimed invention.

In response, the applicant (through prosecuting attorney Dr. Martin Chu) amended Claim 12 to add the limitation "two-dimensional sub-wavelength grating having periodic features in two orthogonal in-plane directions," which was not present in the original claim as filed. The applicant argued that the combination of Bergmann and Simonsen would not have suggested a two-dimensional sub-wavelength grating because Bergmann's grating was exclusively one-dimensional, and Simonsen did not teach or suggest a sub-wavelength grating at all. The Examiner allowed the amended claim.

OWS acknowledges that this amendment constitutes a narrowing amendment that triggers the Festo presumption that the applicant surrendered the territory between the original claim scope and the amended claim scope. However, as set forth below, OWS contends that this presumption is rebutted under the Festo framework.

2. Function-Way-Result Analysis

Even if Lumicore's accused grating structures are found not to literally embody a "two-dimensional sub-wavelength grating" as construed by the Court — for example, if the Court adopts a narrow construction requiring strict equal periodicity in both orthogonal in-plane directions, or requiring a specific geometric arrangement such as a square lattice — OWS contends that the accused structures infringe under the doctrine of equivalents based on the function-way-result test:

Function: The accused grating structure in both the LumiLink 800G-DR8 and the LumiEdge 1600G-LR performs substantially the same function as the claimed two-dimensional sub-wavelength grating — namely, coupling an input optical signal from an optical fiber into a photonic integrated circuit while simultaneously providing polarization diversity. Specifically, the accused grating structure efficiently couples both TE and TM polarization states of the input optical signal into separate on-chip waveguides. This is the same function performed by the claimed "two-dimensional sub-wavelength grating having periodic features in two orthogonal in-plane directions," which achieves polarization-diverse coupling by virtue of its two-dimensional periodicity.

Way: The accused structures achieve this function in substantially the same way as the claimed element — by employing a grating pattern with sub-wavelength features arranged to create diffraction conditions for coupling light of both orthogonal polarization states into on-chip waveguides. The accused structures use periodic or quasi-periodic features that interact with both in-plane polarization components of the optical field, creating the necessary phase-matching conditions for efficient coupling of each polarization state. Whether the features are arranged in a strict two-dimensional periodic array or in a quasi-periodic or apodized two-dimensional pattern, the fundamental mechanism of operation is the same: the grating features in both in-plane directions interact with the incident optical field to diffract and couple both TE and TM polarization components. The minor differences in the exact geometry of the grating features, if any, do not change the way the accused structures achieve polarization-diverse coupling.

Result: The accused structures achieve substantially the same result as the claimed element — efficient fiber-to-chip optical coupling with low insertion loss, low polarization-dependent loss, and polarization diversity, enabling high-bandwidth coherent transceiver operation in silicon photonic modules. The performance specifications of the accused products (including insertion loss, polarization-dependent loss, and coupling efficiency) are consistent with the performance described in the '015 Patent specification for the claimed two-dimensional sub-wavelength grating structure.

3. Prosecution History Estoppel Analysis

OWS acknowledges the narrowing amendment to Claim 12 during prosecution and the resulting Festo presumption that the applicant surrendered equivalents that are within the territory between the original and amended claim scope. See Festo Corp. v. Fenmore & Co., 535 U.S. 722, 740 (2002). However, OWS contends that the presumption of surrender is rebutted under the Festo framework for the following reasons:

Tangential Relation Exception: The Festo Court recognized that the presumption of surrender may be rebutted where "the rationale underlying the [narrowing] amendment [bore] no more than a tangential relation to the equivalent in question." Id. at 740–41. Here, the amendment adding "two-dimensional" to the sub-wavelength grating limitation was made to distinguish the Bergmann reference's one-dimensional grating coupler. The purpose of the amendment was to distinguish the dimensionality of the Bergmann grating — i.e., to establish that the claimed invention required a two-dimensional grating, as opposed to the one-dimensional grating disclosed in Bergmann. The amendment was not directed to surrendering the full range of two-dimensional grating geometries, quasi-two-dimensional variants, or specific arrangements of periodic features within a two-dimensional grating. To the extent the accused Lumicore grating structures employ a two-dimensional arrangement of features that differs in some respect from the literal scope of the claim as amended (e.g., a slightly non-uniform or apodized two-dimensional periodicity rather than a perfectly periodic two-dimensional array), this difference bears only a tangential relationship to the reason for the amendment, which was to distinguish one-dimensional gratings, not to limit the claim to a specific subset of two-dimensional grating configurations.

Unforeseeability Exception: The Festo Court also recognized that the presumption may be rebutted where "the equivalent [was] unforeseeable at the time of the amendment." Id. at 740. OWS contends that Lumicore's specific grating geometry — to the extent it is found not to be literally "two-dimensional" — was not foreseeable at the time of the 2021 amendment. The specific quasi-periodic or apodized two-dimensional grating variant employed by Lumicore was not described in the prior art available at the time of the amendment, and a person of ordinary skill in the art would not have foreseen this particular design alternative as falling outside the scope of the "two-dimensional sub-wavelength grating" limitation as amended.

A detailed prosecution history estoppel analysis is set forth in OWS's internal Prosecution History Estoppel Analysis — '015 Patent (dated October 12, 2024) and Doctrine of Equivalents Analysis Memorandum (dated September 5, 2024), which are incorporated herein by reference. OWS reserves the right to present expert testimony from Dr. Caroline Ashford, Professor of Electrical Engineering and Photonics at the Northfield Institute of Technology, supporting the doctrine of equivalents theory and the rebuttal of the Festo presumption at trial. Dr. Ashford's expert report on infringement is due June 15, 2025 pursuant to the Court's Scheduling Order.

4. Supporting Evidence for Doctrine of Equivalents Theory

The following evidence supports OWS's doctrine of equivalents theory for Claim 12:

• Benchmark teardown photographs and SEM images comparing the accused grating structures to the claimed two-dimensional sub-wavelength grating, demonstrating the structural similarity and functional equivalence of the accused structures. [Benchmark-800G-DR8-021; Benchmark-1600G-LR-017.]

• Lumicore's design files showing the grating geometry parameters, including periodicity data in both in-plane directions, duty cycle data, and etch depth specifications, demonstrating that the accused grating structures are designed to achieve the same polarization-diverse coupling function as the claimed two-dimensional sub-wavelength grating. [LTC-PROD-049410 through LTC-PROD-049415.]

• Dr. Michaud's deposition testimony acknowledging the functional similarity of Lumicore's grating coupler to polarization-diverse grating couplers described in OWS's published patent applications and in the prior art. [Michaud Dep. Tr. at 120:5–121:18 ("Q: Would you agree that the grating coupler in the LumiLink product achieves a similar result to polarization-diverse grating couplers described in OWS's patents — that is, coupling both polarization states from a fiber into separate waveguides on chip? A: In terms of the end result, yes, the objective is similar. You're coupling both polarizations. But the specific design implementation is different. Q: But the function of coupling both polarizations is the same? A: At a high level, yes.").]*

• Published technical literature in the field of silicon photonics confirming that the accused variant and the claimed two-dimensional sub-wavelength grating structure are recognized in the art as functional equivalents for polarization-diverse optical coupling. OWS will identify specific publications in its expert report.

VII. CLAIM 16 — DEPENDENT CLAIM (LITERAL INFRINGEMENT)

Dependency

Claim 16 depends from Claim 1 and incorporates all limitations of Claim 1. All elements of Claim 1 are met by both accused products as described in Section III above. The additional limitation of Claim 16 is addressed below.

Additional Limitation of Claim 16

Summary — Claim 16: The additional limitation of Claim 16 is literally met by both the LumiLink 800G-DR8 and the LumiEdge 1600G-LR. Both accused products include a coherent receiver circuit — comprising optical hybrids, balanced photodetectors, and transimpedance amplifiers — integrated on the same silicon PIC as the grating coupler. The coherent receiver circuit is configured to process both the first and second polarization components after coupling by the polarization-diverse grating coupler.

VIII. SUMMARY TABLE OF INFRINGEMENT CONTENTIONS BY ACCUSED PRODUCT

The following tables summarize OWS's infringement contentions for each asserted claim, organized by accused product. Detailed claim-by-claim, limitation-by-limitation analysis is set forth in Sections III through VII above.

LumiLink 800G-DR8

LumiEdge 1600G-LR

IX. RESERVATION OF RIGHTS

OWS reserves the right to amend, supplement, or modify these infringement contentions as additional discovery is obtained and as the case progresses, including but not limited to the following circumstances:

1. Supplemental Document Productions. OWS anticipates receiving additional Lumicore design files, including RTL schematics, firmware source code, and photonic-IC layout files designated Highly Confidential — Source Code, which have been requested but not yet fully produced. Upon completion of OWS's review of these materials, OWS anticipates serving supplemental infringement contentions, currently expected in April 2025.

2. Claim Construction Order. OWS reserves the right to update this claim chart following the Court's claim construction order, which is expected to issue following the Markman hearing scheduled for March 14, 2025. To the extent the Court's constructions of disputed claim terms differ from OWS's proposed constructions or from the constructions applied in this claim chart, OWS will conform its infringement contentions to the Court's constructions.

3. Expert Analysis. OWS has retained Dr. Caroline Ashford, Professor of Electrical Engineering and Photonics at the Northfield Institute of Technology, as its technical expert on infringement. Dr. Ashford's expert report on infringement is due June 15, 2025 pursuant to the Court's Scheduling Order. OWS reserves the right to supplement or modify its infringement contentions based on Dr. Ashford's analysis, including her opinions on literal infringement, the doctrine of equivalents, and the technical functioning of the accused products.

4. Additional Depositions. OWS anticipates deposing additional Lumicore personnel and third-party witnesses, including but not limited to the anticipated deposition of Melissa Chen (former Lumicore Senior Photonic Design Engineer, now employed at Veridian Photonics, Inc., San Jose, CA). Ms. Chen was a member of Lumicore's design team for the LumiLink 800G-DR8 and LumiEdge 1600G-LR and may provide testimony regarding Lumicore's design process for the accused products, including the selection and design of the grating coupler architecture and Lumicore's awareness of OWS's patents during product development. OWS reserves the right to supplement its infringement contentions based on testimony obtained from Ms. Chen and other witnesses.

5. Induced and Contributory Infringement. OWS also asserts induced infringement under 35 U.S.C. § 271(b) and contributory infringement under 35 U.S.C. § 271(c) of the '015 Patent against Lumicore, as set forth in Counts V and VI of the Complaint (D.E. 1). Supporting contentions for those counts, including identification of specific acts of inducement and the specific components or materials sold by Lumicore that constitute a material part of the patented invention, are provided in the P.R. 3-1 Infringement Contentions served contemporaneously with this claim chart on September 16, 2024.

6. Willful Infringement. OWS further asserts that Lumicore's infringement of the '015 Patent is willful, as set forth in Count VII of the Complaint (D.E. 1). OWS's willful infringement theory is based on, among other things: (a) FairPoint Licensing Group, LLC's May 15, 2023 supplemental licensing letter to Lumicore, which specifically identified the '015 Patent and the LumiLink 800G-DR8 as an accused product, thereby providing Lumicore with actual notice of the '015 Patent and its applicability to Lumicore's products; (b) Lumicore's subsequent launch of the LumiEdge 1600G-LR in the fourth quarter of 2023 with knowledge of the '015 Patent and without obtaining a license or opinion of counsel regarding non-infringement; and (c) Lumicore's express refusal to take a license under the '015 Patent on July 10, 2023, following OWS's licensing overture. Detailed willful infringement contentions are set forth in OWS's separate willful infringement submissions and in the P.R. 3-1 Infringement Contentions.

X. CERTIFICATION

The undersigned counsel of record for Plaintiff Optiwave Semiconductor Corp. hereby certify that the infringement contentions set forth in this claim chart have been prepared in good faith and are based on a reasonable investigation of the facts and applicable law. The investigation underlying these contentions includes, without limitation, a thorough review of: (i) the asserted claims of U.S. Patent No. 11,402,015 and their prosecution history before the United States Patent and Trademark Office; (ii) the Benchmark Semiconductor Analysis, LLC teardown reports for the LumiLink 800G-DR8 (June 2023) and LumiEdge 1600G-LR (February 2024); (iii) Lumicore Technologies, Inc.'s documents produced in discovery in this action, including photonic-IC design files, engineering specifications, and design rule documents; (iv) publicly available information about the accused products, including product datasheets, marketing materials, and published technical papers; and (v) deposition testimony of Dr. Sandra Michaud and Kevin Ng. Counsel further certify that the contentions set forth herein are not being presented for any improper purpose and are warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law.

Respectfully submitted,

CALDERWOOD & HARKNESS LLP

By: ________

Alan Ngo, Responsible Partner California State Bar No. 247891 Admitted pro hac vice, E.D. Tex. (Order dated June 18, 2024) 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 Telephone: (213) 555-4700 Facsimile: (213) 555-4701

Email: ango@calderwoodharkness.com

Wendy Schultz, Lead Associate California State Bar No. 312456 Admitted pro hac vice, E.D. Tex. (Order dated June 18, 2024)

Omar Siddiqui, Working Associate California State Bar No. 325789 Admitted pro hac vice, E.D. Tex. (Order dated June 18, 2024)

WHITMORE & CALLAHAN LLP

By: ________

James "Jim" Callahan, Local Counsel Texas State Bar No. 03845612 110 North College Avenue, Suite 800 Tyler, TX 75702 Telephone: (903) 555-2200 Facsimile: (903) 555-2201

Email: jcallahan@whitmorecallahan.com

Attorneys for Plaintiff Optiwave Semiconductor Corp.

Date: September 16, 2024

XI. APPENDICES (REFERENCED BUT SEPARATELY BOUND)

The following appendices are referenced in this claim chart and are submitted as separately bound exhibits to OWS's P.R. 3-1 Infringement Contentions:

Appendix 1: Annotated Benchmark Teardown Photographs — LumiLink 800G-DR8

Appendix 1 contains cross-referenced figures from Benchmark Semiconductor Analysis, LLC's June 2023 teardown report for the LumiLink 800G-DR8, annotated to identify specific structures within the product that correspond to each claim limitation of the '015 Patent asserted in this claim chart. Annotations include labeled callouts identifying the photonic integrated circuit, the silicon substrate, the polarization-diverse grating coupler, the first and second grating regions, the first and second waveguides, the polarization rotator element, sub-wavelength grating features, two-dimensional grating periodicity, and coherent receiver circuit components (optical hybrids, balanced photodetectors, and transimpedance amplifiers). Each annotated figure is cross-referenced to the corresponding limitation in this claim chart by section and limitation number.

Appendix 2: Annotated Benchmark Teardown Photographs — LumiEdge 1600G-LR

Appendix 2 contains cross-referenced figures from Benchmark Semiconductor Analysis, LLC's February 2024 teardown report for the LumiEdge 1600G-LR, annotated in the same manner as Appendix 1 to identify specific structures corresponding to each claim limitation of the '015 Patent. Each annotated figure is cross-referenced to the corresponding limitation in this claim chart by section and limitation number.

Appendix 3: Lumicore Design Document Excerpts (Designated Highly Confidential — Attorneys' Eyes Only)

Appendix 3 contains compiled excerpts from Lumicore Technologies, Inc.'s documents produced in discovery that are cited in this claim chart, including photonic-IC layout files, CAD schematics, grating design parameter tables, engineering specifications, and design rule documents. Each excerpt is identified by Bates number (LTC-PROD-xxxxxx) and is cross-referenced to the corresponding citation in this claim chart. This appendix is designated HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY in its entirety pursuant to the Stipulated Protective Order entered in this action (D.E. 18).

Appendix 4: Relevant Deposition Transcript Excerpts

Appendix 4 contains compiled excerpts from the deposition transcripts of: (a) Dr. Sandra Michaud, Lumicore Chief Technology Officer, deposed November 19, 2024; and (b) Kevin Ng, Lead Engineer at Benchmark Semiconductor Analysis, LLC, deposed January 7, 2025. Each excerpt is identified by page and line number and is cross-referenced to the corresponding citation in this claim chart.

Appendix 5: Prosecution History Excerpts — '015 Patent

Appendix 5 contains relevant excerpts from the prosecution history (file wrapper) of U.S. Patent No. 11,402,015 before the United States Patent and Trademark Office, including: (a) the Examiner's office actions containing § 103 rejections of then-pending claims, including the rejection combining Bergmann (U.S. Patent No. 8,412,007) with Simonsen (PCT/EP2015/071234); (b) the applicant's responses and claim amendments, including the narrowing amendment to Claim 12 adding the "two-dimensional sub-wavelength grating" limitation; (c) the applicant's remarks and arguments distinguishing the prior art; and (d) the Examiner's notice of allowance. These prosecution history excerpts are provided in support of the doctrine of equivalents and prosecution history estoppel analysis set forth in Section VI.B of this claim chart.

END OF INFRINGEMENT CLAIM CHART — U.S. PATENT NO. 11,402,015 — CLAIMS 1, 5, 8, 12, AND 16

Claim Language	Accused Products / Evidence
"A silicon photonic transceiver module comprising:"	The LumiLink 800G-DR8 and the LumiEdge 1600G-LR are each silicon photonic transceiver modules within the meaning of the '015 Patent's preamble. Lumicore's own product datasheets for both accused products describe them as "silicon photonic" transceiver modules designed for data-center interconnect applications. See LumiLink 800G-DR8 Product Datasheet, Rev. 2.1 (March 2023), at 1 ("The LumiLink 800G-DR8 is a high-performance silicon photonic transceiver module . . ."); LumiEdge 1600G-LR Product Datasheet, Rev. 1.0 (October 2023), at 1 ("The LumiEdge 1600G-LR leverages Lumicore's proven silicon photonic platform . . ."). The Benchmark teardown analysis confirms that both products incorporate a silicon-based photonic integrated circuit ("PIC") substrate. [Benchmark-800G-DR8-012, Fig. 3 (die photograph showing silicon PIC); Benchmark-1600G-LR-008, Fig. 2 (die photograph showing silicon PIC).] Dr. Sandra Michaud, Lumicore's Chief Technology Officer, confirmed in her deposition that both the LumiLink 800G-DR8 and the LumiEdge 1600G-LR incorporate silicon photonic integration as the core platform technology. [Michaud Dep. Tr. at 87:14–88:5 ("Q: Is the LumiLink 800G-DR8 built on a silicon photonics platform? A: Yes, it is. Q: And the LumiEdge 1600G-LR? A: Same platform, yes.")]. To the extent the preamble is limiting, it is satisfied by both accused products.
Claim Language	Accused Products / Evidence
"a photonic integrated circuit formed on a silicon substrate;"	Both accused products contain a photonic integrated circuit fabricated on a silicon-on-insulator ("SOI") wafer, which constitutes a "silicon substrate" within the meaning of this limitation. The Benchmark teardown reports for both products include cross-sectional scanning electron microscope ("SEM") images that clearly show the layered structure of the PIC die, including the silicon substrate layer, the buried oxide ("box") layer, and the silicon device layer in which the photonic waveguide structures are formed. [Benchmark-800G-DR8-015, Fig. 5 (cross-sectional SEM image showing SOI layer stack with silicon substrate layer identified); Benchmark-1600G-LR-011, Fig. 4 (analogous cross-sectional SEM image).] Lumicore's internal design files confirm that both accused products are fabricated using an SOI-based process at a third-party foundry. [LTC-PROD-045892 through LTC-PROD-045901 (process specification documents referencing SOI wafer parameters, including substrate resistivity, box thickness, and device-layer thickness).] This limitation is met literally under OWS's proposed construction of "formed on a silicon substrate," which OWS proposes should be construed as "formed on or within a silicon-based wafer using semiconductor fabrication processes." This proposed construction is consistent with the intrinsic evidence, including the '015 Patent specification's description of embodiments fabricated on SOI wafers (see '015 Patent, col. 4, ll. 15–28), and is also consistent with the ordinary understanding of a person of ordinary skill in the art of silicon photonics, who would understand "silicon substrate" to encompass SOI wafer platforms. Even under Lumicore's proposed construction of this term (to the extent Lumicore disputes this term, which is also at issue in the parallel '193 Patent claim construction), the accused products satisfy this limitation because they are indisputably formed on silicon-based wafers.
Claim Language	Accused Products / Evidence
"a polarization-diverse grating coupler disposed on the photonic integrated circuit, the grating coupler configured to couple an input optical signal into the photonic integrated circuit;"	Both accused products incorporate a grating coupler structure disposed on the PIC that is configured to couple fiber-optic input signals from a single-mode optical fiber into on-chip waveguides. This grating coupler is polarization-diverse within the meaning of this limitation. Benchmark Teardown Evidence: The Benchmark teardown reports identify and photograph the grating coupler structures in both accused products. In the LumiLink 800G-DR8, the grating coupler is located on the receive side of the PIC die and is clearly visible in both optical microscopy and SEM imaging. [Benchmark-800G-DR8-018 through 020, Figs. 7–9 (optical photograph, top-down SEM, and high-magnification SEM of grating coupler structure).] In the LumiEdge 1600G-LR, an analogous grating coupler structure is identified. [Benchmark-1600G-LR-014 through 016, Figs. 6–8 (optical photograph, top-down SEM, and high-magnification SEM).] Polarization Diversity Under OWS's Proposed Construction: The grating coupler in both products is capable of coupling light of two orthogonal polarization states (TE and TM), thereby satisfying OWS's proposed construction of "polarization-diverse grating coupler" (i.e., "a grating coupler capable of coupling light of two orthogonal polarization states"). The Benchmark teardown analysis confirms that the grating coupler in each product is connected to two separate output waveguides, each carrying a different polarization component, which is the hallmark of a polarization-diverse design. Infringement Under Lumicore's Proposed Construction: Even under Lumicore's narrower proposed construction ("a two-dimensional grating coupler with a polarization-splitting element that simultaneously couples TE and TM modes"), the accused structures satisfy this limitation because: (1) The Benchmark teardown shows a two-dimensional periodic grating pattern in both products, with features arranged in a grid-like pattern visible in top-down SEM images. [Benchmark-800G-DR8-019, Fig. 8 (annotated top-down SEM showing bidirectional periodicity of grating features); Benchmark-1600G-LR-015, Fig. 7 (analogous image).] (2) The grating structure includes a polarization-splitting element that directs TE and TM polarization modes into separate on-chip waveguide paths, as confirmed by the dual-waveguide output architecture observed in the teardown. (3) Lumicore's own internal design specifications reference "dual-polarization grating coupler" functionality. [LTC-PROD-048723, at 3 ("The receive-side grating coupler provides dual-polarization coupling for coherent receiver operation.").] (4) Dr. Michaud confirmed in her deposition that the LumiLink 800G-DR8 uses "a grating coupler that handles both polarizations." [Michaud Dep. Tr. at 112:8–113:2 ("Q: Does the LumiLink 800G-DR8 use a grating coupler that handles both polarizations? A: It does, yes. The grating coupler on the receive path is designed to accept both TE and TM polarization states from the fiber.").]
Claim Language	Accused Products / Evidence
"wherein the grating coupler comprises a first grating region and a second grating region, the first grating region configured to couple a first polarization component of the input optical signal and the second grating region configured to couple a second polarization component of the input optical signal, the first and second polarization components being orthogonal;"	The grating coupler structures in both accused products comprise two distinct grating regions, each configured to couple a different orthogonal polarization component of the input optical signal. LumiLink 800G-DR8: The Benchmark teardown identifies two distinct grating regions within the coupler structure of the LumiLink 800G-DR8. The first grating region is configured to couple the TE polarization component of the input optical signal, and the second grating region is configured to couple the TM polarization component into a separate waveguide channel. These regions are clearly delineated in the annotated SEM images provided in the teardown report. [Benchmark-800G-DR8-020, Fig. 9 (annotated top-down SEM with region boundaries marked, showing Region A (TE coupling) and Region B (TM coupling)).] The two regions exhibit distinct grating parameters (pitch, duty cycle, and orientation) consistent with coupling different polarization states, as measured by Benchmark's metrology analysis. LumiEdge 1600G-LR: An analogous dual-region grating coupler architecture is observed in the LumiEdge 1600G-LR, with the same fundamental design approach of dedicating separate grating regions to each polarization component. [Benchmark-1600G-LR-016, Fig. 8 (annotated top-down SEM with analogous region identification).] Orthogonality: TE (transverse electric) and TM (transverse magnetic) modes are orthogonal polarization states by definition in the field of optics and photonics. A person of ordinary skill in the art would understand the TE and TM modes coupled by the grating regions in the accused products to constitute "orthogonal" polarization components within the meaning of this claim limitation. Lumicore Design Documentation: Lumicore's internal photonic design rule document for the accused products explicitly describes the grating coupler as having "separate coupling regions for each polarization axis." [LTC-PROD-049115, p. 14 ("The grating coupler architecture employs separate coupling regions for each polarization axis, with Region 1 optimized for TE-mode coupling and Region 2 optimized for TM-mode coupling.").] This document further specifies that the two regions are designed with different grating parameters to achieve efficient coupling for each respective polarization mode, confirming that the accused products embody this claim limitation.
Claim Language	Accused Products / Evidence
"a first waveguide optically connected to the first grating region to receive the first polarization component; and a second waveguide optically connected to the second grating region to receive the second polarization component."	Both accused products include two separate on-chip waveguides extending from the grating coupler, each optically connected to one of the two grating regions and carrying one of the two orthogonal polarization components. LumiLink 800G-DR8: The Benchmark teardown identifies a first waveguide that is optically connected to the first grating region (Region A) and carries the TE-mode signal, and a second waveguide that is optically connected to the second grating region (Region B) and carries the TM-mode signal. Both waveguides route the coupled signals to downstream processing elements on the PIC. [Benchmark-800G-DR8-022, Fig. 11 (SEM image showing two waveguide outputs from grating coupler, annotated with "WG1 — TE" and "WG2 — TM"); Benchmark-800G-DR8-024, Fig. 13 (waveguide routing layout derived from optical microscopy and SEM stitching, showing paths of both waveguides from grating coupler to coherent receiver block).] LumiEdge 1600G-LR: An analogous waveguide pair is observed in the LumiEdge 1600G-LR, with a first waveguide connected to the first grating region and a second waveguide connected to the second grating region. [Benchmark-1600G-LR-018, Fig. 10 (annotated SEM image showing dual waveguide outputs from grating coupler).] Lumicore Mask Layout Files: Lumicore's photonic-IC mask-layout files, produced in discovery, confirm the presence of two output waveguides from the grating coupler element in both accused products. [LTC-PROD-049230 through LTC-PROD-049235 (CAD layout excerpts showing grating coupler cell with two waveguide output ports, labeled "TEout" and "TMout" in the design database).] The mask layout data is consistent with the physical structures observed in the Benchmark teardown analysis and confirms that the dual-waveguide architecture is an intentional design feature, not an artifact.
Claim Language	Accused Products / Evidence
"The silicon photonic transceiver module of claim 1, further comprising a polarization rotator element disposed on the photonic integrated circuit, the polarization rotator element configured to rotate the polarization of one of the first polarization component or the second polarization component such that both the first polarization component and the second polarization component propagate in a same polarization mode in their respective waveguides."	Both accused products include a polarization rotator element disposed on the photonic integrated circuit that rotates the polarization of the TM-mode component into the TE mode after coupling by the grating coupler, so that both waveguide paths carry TE-mode signals for downstream coherent processing. This is a standard and well-known design approach in polarization-diverse receiver architectures in silicon photonic systems, where downstream optical components (e.g., optical hybrids, photodetectors) are typically optimized for TE-mode operation. Benchmark Teardown Evidence: The Benchmark teardown identifies a dedicated polarization rotator structure on the PIC of both accused products, located downstream of the second waveguide output of the grating coupler (i.e., the waveguide carrying the TM-mode component). [Benchmark-800G-DR8-025, Fig. 14 (SEM image of polarization rotator structure on LumiLink 800G-DR8 PIC, annotated with dimensional measurements); Benchmark-1600G-LR-019, Fig. 11 (analogous SEM image of polarization rotator structure on LumiEdge 1600G-LR PIC).] The polarization rotator in both products is a mode-evolution-based rotator, which gradually converts the TM0 mode to the TE0 mode over a tapered waveguide section, as confirmed by the physical geometry observed in the teardown. Lumicore Design Documentation: Lumicore's design documentation explicitly describes the presence and function of the polarization rotator element. [LTC-PROD-049301, at 7 ("Following the grating coupler's TM output waveguide, a TM-to-TE polarization rotation stage converts the coupled TM-mode signal into TE-mode for compatibility with the downstream coherent receiver optical hybrid, which operates in TE mode.").] This document further specifies the design parameters of the rotator, including its length, taper geometry, and target extinction ratio for polarization conversion. Deposition Testimony: Kevin Ng of Benchmark confirmed in his deposition that the teardown analysis revealed a dedicated polarization rotator element downstream of the grating coupler's second waveguide output in both accused products. [Ng Dep. Tr. at 45:10–46:3 ("Q: Did you identify a polarization rotator element in the LumiLink 800G-DR8? A: Yes, we did. It was located immediately downstrea

INFRINGEMENT CLAIM CHART
U.S. PATENT NO. 11,402,015
"Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers"
Claims 1, 5, 8, 12, and 16
SUBJECT TO STIPULATED PROTECTIVE ORDER — PORTIONS REFERENCING LUMICORE DESIGN FILES AND INTERNAL DOCUMENTS DESIGNATED HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY OR HIGHLY CONFIDENTIAL — SOURCE CODE
UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
OPTIWAVE SEMICONDUCTOR CORP., Plaintiff,
v.
LUMICORE TECHNOLOGIES, INC., Defendant.
Case No. 2:24-cv-00319-JRG
Before the Honorable Judge James R. Gilstrap
Filed As: Exhibit to P.R. 3-1 Infringement Contentions
Date: September 16, 2024
Prepared By:
Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071
Alan Ngo, Responsible Partner Wendy Schultz, Lead Associate Omar Siddiqui, Working Associate
On behalf of Plaintiff Optiwave Semiconductor Corp. 4810 Bayside Technology Parkway, Suite 300 Santa Clara, CA 95054
Local Counsel:
Whitmore & Callahan LLP 110 North College Avenue, Suite 800 Tyler, TX 75702 James "Jim" Callahan
CONFIDENTIALITY DESIGNATION: This document and the appendices referenced herein are subject to the Stipulated Protective Order entered in this matter (D.E. 18, July 5, 2024). Portions of this claim chart reference and incorporate by reference Lumicore Technologies, Inc. design files, engineering specifications, and internal documents designated HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY and HIGHLY CONFIDENTIAL — SOURCE CODE. Those portions, and the corresponding appendix materials, are to be treated in accordance with the terms of the Stipulated Protective Order and may not be disclosed to any person not authorized to receive such materials under the applicable designation tier.
Right-click to update Table of Contents
I. INTRODUCTION AND OVERVIEW
A. Purpose of This Claim Chart
This claim chart is served as part of Optiwave Semiconductor Corp.'s ("OWS" or "Plaintiff") P.R. 3-1 Infringement Contentions pursuant to the Court's Scheduling Order (D.E. 27, entered August 12, 2024) and the Patent Rules for the Eastern District of Texas. The chart is intended to provide Lumicore Technologies, Inc. ("Lumicore" or "Defendant") with notice of the specific bases for OWS's infringement allegations in a claim-by-claim, limitation-by-limitation manner, as required by P.R. 3-1(b).
Specifically, this chart identifies, on a claim-by-claim, limitation-by-limitation basis, the specific basis for OWS's contention that Lumicore's accused products — the LumiLink 800G-DR8 and the LumiEdge 1600G-LR — infringe asserted Claims 1, 5, 8, 12, and 16 of U.S. Patent No. 11,402,015 (the "'015 Patent"). For each limitation of each asserted claim, this chart identifies the corresponding element or structure in the accused products that practices the limitation, together with specific citations to supporting evidence including product teardown reports, Lumicore's own design documentation produced in discovery, deposition testimony, product datasheets, and publicly available technical literature.
OWS contends that each accused product infringes the identified claims both literally and, with respect to Claim 12, under the doctrine of equivalents. The doctrine of equivalents theory for Claim 12 is set forth in detail in Section VI.B of this chart, together with an analysis of prosecution history estoppel under the framework established by Festo Corp. v. Fenmore & Co., 535 U.S. 722 (2002).
B. The '015 Patent
The asserted patent is U.S. Patent No. 11,402,015, entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers" (the "'015 Patent"). The relevant bibliographic and prosecution details of the '015 Patent are as follows:
•  Patent Number: U.S. Patent No. 11,402,015
•  Full Title: Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers
•  Filing Date: August 30, 2019
•  Issue Date: August 2, 2022
•  Current Assignee: Optiwave Semiconductor Corp., Santa Clara, California
•  Priority: The '015 Patent claims the benefit of U.S. Provisional Application No. 62/499,117, filed April 7, 2017
•  Related Patents: The '015 Patent shares a common provisional application (U.S. Provisional Application No. 62/499,117) with U.S. Patent No. 10,891,193 (the "'193 Patent"), which is also asserted in this action
•  Maintenance Fees: All maintenance fees for the '015 Patent are current and have been timely paid
•  Prosecuting Attorney: The '015 Patent was prosecuted before the United States Patent and Trademark Office by Dr. Martin Chu of Cascade IP Advisors, LLC, 1550 Crystal Drive, Suite 600, Arlington, VA 22202
•  Named Inventors: Dr. Jian-Wei Huang, Chief Technology Officer of OWS, and Dr. Nikolai Petrov, Vice President of Engineering, Photonics Division of OWS
•  Inter Partes Review Status: No petitions for inter partes review ("IPR") have been filed against any claims of the '015 Patent as of the date of this filing, and the one-year statutory bar under 35 U.S.C. § 315(b) has expired as to Lumicore given the date of service of the Complaint in this action
The '015 Patent generally relates to a silicon photonic transceiver module incorporating a polarization-diverse grating coupler that efficiently couples optical signals from an optical fiber into a photonic integrated circuit while accommodating both orthogonal polarization states (TE and TM). The specification discloses that conventional grating couplers suffer from polarization-dependent loss, which degrades system performance in coherent optical communication systems. The '015 Patent addresses this problem through a grating coupler architecture that includes distinct grating regions configured to couple each polarization component into separate on-chip waveguides, enabling downstream coherent processing of both polarization channels.
C. Accused Products
OWS accuses the following two Lumicore products of infringing Claims 1, 5, 8, 12, and 16 of the '015 Patent:
1. LumiLink 800G-DR8. The LumiLink 800G-DR8 is a silicon-photonic transceiver module designed for 800 Gigabit Ethernet data-center interconnect applications. The product was launched commercially by Lumicore in the first quarter of 2023. Based on Lumicore's public financial disclosures and segment-level reporting, the LumiLink 800G-DR8 generated approximately $128.4 million in revenue during fiscal year 2023. The product is marketed for hyperscale data-center and cloud-service-provider applications, and Lumicore's published datasheets describe it as leveraging "advanced silicon photonic integration" for high-density, low-power optical connectivity.
2. LumiEdge 1600G-LR. The LumiEdge 1600G-LR is a silicon-photonic transceiver module designed for 1.6 Terabit long-reach interconnect applications in both data-center and telecommunications environments. The product was launched commercially by Lumicore in the fourth quarter of 2023. Based on Lumicore's public financial disclosures, the LumiEdge 1600G-LR generated approximately $41.7 million in revenue during the portion of fiscal year 2023 following its launch, and revenue has continued to grow in subsequent quarters. The product is marketed as Lumicore's next-generation coherent transceiver platform.
Both accused products are silicon-photonic transceiver modules designed for hyperscale data-center and telecom interconnect applications. Both products incorporate photonic integrated circuits fabricated using silicon-on-insulator processes and include polarization-diverse grating coupler structures, polarization rotators, sub-wavelength grating features, and integrated coherent receiver circuits, as detailed in the claim charts that follow.
The accused products are manufactured, used, sold, offered for sale, and/or imported into the United States by Lumicore Technologies, Inc., a Delaware corporation headquartered at 9200 Spectrum Boulevard, Building C, Austin, TX 78759. Lumicore also maintains a sales and technical support office within this judicial district at 2700 Earl Campbell Parkway, Suite 150, Tyler, TX 75701. Accused products have been sold to customers within the Eastern District of Texas, including but not limited to Pinnacle Data Systems, LLC (Longview, TX), Frontier Cloud Services, Inc. (Marshall, TX), and CrossPoint Networking Corp. (Plano, TX). OWS's jurisdictional and venue allegations are set forth in detail in the Complaint (D.E. 1).
D. Sources of Evidence
The infringement contentions set forth in this claim chart are based on, and supported by, the following categories of evidence:
Benchmark Semiconductor Analysis, LLC Teardown Reports. OWS commissioned Benchmark Semiconductor Analysis, LLC ("Benchmark"), an independent semiconductor and photonics device analysis firm located at 2244 Mission College Boulevard, Santa Clara, CA 95054, to perform detailed physical teardown analyses of both accused products. The teardown analyses were conducted by Lead Engineer Kevin Ng and include optical inspection, scanning electron microscopy ("SEM"), cross-sectional imaging, energy-dispersive X-ray spectroscopy ("EDS"), and dimensional metrology of the relevant photonic integrated circuit structures within each accused product.
•  The LumiLink 800G-DR8 teardown was completed in June 2023 and is documented in a comprehensive written report with annotated photographs and SEM images.
•  The LumiEdge 1600G-LR teardown was completed in February 2024 and is documented in a similar report.
•  Kevin Ng was deposed on January 7, 2025, and provided testimony confirming the teardown methodology, chain of custody for the examined samples, calibration of measurement equipment, and identification of specific structures within the accused products that correspond to claim limitations of the '015 Patent.
Lumicore Design Documents Produced in discovery. Lumicore has produced in this litigation design documents, including photonic-IC layout files, CAD schematics, grating design parameter files, engineering specifications, design rule documents, and related technical documentation for the LumiLink 800G-DR8 and LumiEdge 1600G-LR. These documents were produced pursuant to the parties' agreed-upon ESI protocol and are designated Highly Confidential — Attorneys' Eyes Only and, in certain instances, Highly Confidential — Source Code under the Stipulated Protective Order. Citations to these documents in this claim chart use the format "[LTC-PROD-xxxxxx]" followed by Bates number references.
Lumicore Product Datasheets and Marketing Materials. OWS relies on publicly available product datasheets, application notes, white papers, and marketing materials for the LumiLink 800G-DR8 and LumiEdge 1600G-LR, as well as versions of these documents produced in discovery that contain additional technical detail not included in the public versions.
Deposition Testimony. OWS relies on the deposition testimony of Dr. Sandra Michaud, Lumicore's Chief Technology Officer, taken on November 19, 2024. Dr. Michaud provided testimony regarding Lumicore's product architecture, design process, and the technical characteristics of the accused products, including the grating coupler structures at issue. OWS also relies on the deposition testimony of Kevin Ng, referenced above.
Published Technical Literature and IEEE Standards. OWS relies on published technical literature in the field of silicon photonics and grating coupler design, as well as IEEE standards referenced in the accused products' specifications (including IEEE 802.3bs and IEEE 802.3ck), to the extent they bear on the interpretation or application of the asserted claim limitations.
Reservation of Right to Supplement. OWS reserves the right to supplement this claim chart as additional discovery becomes available, including without limitation supplemental Lumicore design files, RTL schematics, and source-code review results. OWS anticipates filing supplemental infringement contentions in April 2025, following completion of source-code review and additional document productions.
E. Claim Construction Positions
This claim chart applies OWS's proposed claim constructions as set forth in the Joint Claim Construction Statement filed October 28, 2024 (D.E. 40), and as briefed in OWS's Opening Claim Construction Brief (D.E. 44, filed November 15, 2024) and Reply Claim Construction Brief (D.E. 52, filed December 20, 2024).
The parties have identified 14 disputed claim terms for construction across the asserted claims of the '015 Patent and the related '193 Patent. For purposes of this claim chart, the most significant disputed term is "polarization-diverse grating coupler," which appears in Claims 1, 5, 8, 12, and 16 of the '015 Patent. The parties' competing constructions for this term are as follows:
•  OWS's Proposed Construction: "a grating coupler capable of coupling light of two orthogonal polarization states."
•  Lumicore's Proposed Construction: "a two-dimensional grating coupler with a polarization-splitting element that simultaneously couples TE and TM modes."
As demonstrated in the claim charts below, OWS contends that infringement is established under either party's proposed construction of "polarization-diverse grating coupler." OWS further contends that Lumicore's proposed construction improperly imports limitations from preferred embodiments described in the specification and is inconsistent with the intrinsic evidence, as argued in OWS's claim construction briefing. However, even accepting Lumicore's narrower proposed construction arguendo, the accused products satisfy every element of the disputed term, as the evidence demonstrates that the grating couplers in the LumiLink 800G-DR8 and LumiEdge 1600G-LR are two-dimensional grating couplers with polarization-splitting elements that simultaneously couple TE and TM modes.
The Markman hearing on all 14 disputed terms is scheduled for March 14, 2025 before the Honorable Judge James R. Gilstrap. OWS reserves the right to update this claim chart following the Court's claim construction order to conform the infringement contentions to the Court's constructions.
F. Infringement Theories
OWS asserts the following infringement theories with respect to the asserted claims of the '015 Patent:
Literal Infringement. OWS asserts literal infringement of Claims 1, 5, 8, and 16 of the '015 Patent by both the LumiLink 800G-DR8 and the LumiEdge 1600G-LR. For each of these claims, OWS contends that every limitation is literally present in the accused products.
Literal Infringement and Doctrine of Equivalents. OWS asserts literal infringement of Claim 12 of the '015 Patent by both accused products and, in the alternative, infringement under the doctrine of equivalents. The doctrine of equivalents theory for Claim 12 specifically addresses the "two-dimensional sub-wavelength grating" limitation. OWS contends that, even if the Court determines that Lumicore's accused grating structures do not literally satisfy this limitation (for example, under a narrow construction of "two-dimensional" that the accused structures might not meet), the accused element performs substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed two-dimensional sub-wavelength grating element.
OWS's prosecution history estoppel analysis for Claim 12 — referencing the narrowing amendment made during prosecution of the '015 Patent to overcome a § 103 rejection combining U.S. Patent No. 8,412,007 (Bergmann) with PCT/EP2015/071234 (Simonsen) — is addressed in detail in Section VI.B below. OWS contends that the Festo exception for tangential relation applies and that the doctrine of equivalents has not been foreclosed for this limitation. A comprehensive analysis is also provided in OWS's separate Doctrine of Equivalents Analysis Memorandum (dated September 5, 2024) and Prosecution History Estoppel Analysis — '015 Patent (dated October 12, 2024).
II. CLAIM CHART FORMAT AND CONVENTIONS
The claim charts set forth in Sections III through VII of this document use a two-column format as follows:
•  Left Column — Claim Language: Contains the exact claim language of each limitation of the asserted claims, broken out on a limitation-by-limitation basis. Claim elements are identified using the notation "Limitation 1[a]," "Limitation 1[b]," etc.
•  Right Column — Accused Products / Evidence: Contains the identification of how each accused product meets the corresponding limitation, together with citations to specific evidence supporting OWS's infringement contentions.
The following additional conventions are employed throughout the claim charts:
•  Where a limitation is met identically or in substantially similar fashion by both accused products (the LumiLink 800G-DR8 and the LumiEdge 1600G-LR), a combined entry is provided referencing both products. Where material differences exist between the products with respect to a given limitation, separate entries are provided for each product.
•  Citations to Benchmark teardown reports are provided in the format [Benchmark-800G-DR8-xxx] or [Benchmark-1600G-LR-xxx], where "xxx" refers to the page number of the report, followed by a figure reference (e.g., "Fig. 3") where applicable.
•  Citations to Lumicore documents produced in discovery are provided in the format [LTC-PROD-xxxxxx], where "xxxxxx" refers to the Bates-stamped production number. Where a range of Bates numbers is cited, the format [LTC-PROD-xxxxxx through LTC-PROD-xxxxxx] is used.
•  Citations to deposition testimony are provided in the format [Witness Name Dep. Tr. at xx:xx–xx:xx], identifying the witness, the deposition transcript, and the page and line numbers.
•  The annotations [LITERAL] and [DOE] are used to distinguish between literal infringement and doctrine of equivalents theories where both theories are asserted for a given limitation. Where only literal infringement is asserted, the [LITERAL] annotation may be omitted for clarity.
•  Photographs and SEM images from the Benchmark teardown reports are referenced by figure number. Physical annotations identifying specific structures within those images are described in the claim chart text and are further documented in Appendices 1 and 2 (annotated teardown photographs, separately bound).
•  All claim language is quoted verbatim from U.S. Patent No. 11,402,015 as issued.
III. CLAIM 1 — INDEPENDENT CLAIM (LITERAL INFRINGEMENT)
Claim 1 of the '015 Patent is an independent claim. OWS contends that both the LumiLink 800G-DR8 and the LumiEdge 1600G-LR literally infringe every limitation of Claim 1. The following chart sets forth OWS's infringement contentions on a limitation-by-limitation basis.
Preamble
Limitation 1[a]
Limitation 1[b]
Limitation 1[c]
Limitation 1[d]
Summary — Claim 1: Every limitation of Claim 1 of the '015 Patent is literally met by both the LumiLink 800G-DR8 and the LumiEdge 1600G-LR. The accused products are silicon photonic transceiver modules comprising a photonic integrated circuit formed on a silicon substrate, a polarization-diverse grating coupler disposed on the PIC that couples an input optical signal into the PIC, wherein the grating coupler comprises first and second grating regions configured to couple orthogonal polarization components, and first and second waveguides optically connected to the respective grating regions to receive the respective polarization components.
IV. CLAIM 5 — DEPENDENT CLAIM (LITERAL INFRINGEMENT)
Dependency
Claim 5 depends from Claim 1 and incorporates all limitations of Claim 1. All elements of Claim 1 are met by both accused products as described in Section III above. The additional limitation of Claim 5 is addressed below.
Additional Limitation of Claim 5
Summary — Claim 5: The additional limitation of Claim 5 is literally met by both the LumiLink 800G-DR8 and the LumiEdge 1600G-LR. Both accused products include a polarization rotator element on the PIC that rotates the TM-mode polarization component into the TE mode, such that both polarization components propagate in the same polarization mode (TE) in their respective waveguides for downstream coherent processing.
V. CLAIM 8 — DEPENDENT CLAIM (LITERAL INFRINGEMENT)
Dependency
Claim 8 depends from Claim 1 and incorporates all limitations of Claim 1. All elements of Claim 1 are met by both accused products as described in Section III above. The additional limitation of Claim 8 is addressed below.
Additional Limitation of Claim 8
Summary — Claim 8: The additional limitation of Claim 8 is literally met by both the LumiLink 800G-DR8 and the LumiEdge 1600G-LR. Both accused products incorporate grating couplers with sub-wavelength grating structures having pitches (approximately 480 nm and 470 nm, respectively) that are smaller than the C-band operating wavelength of approximately 1550 nm.
VI. CLAIM 12 — DEPENDENT CLAIM (LITERAL INFRINGEMENT AND DOCTRINE OF EQUIVALENTS)
Dependency
Claim 12 depends from Claim 8, which in turn depends from Claim 1. All elements of Claims 1 and 8 are incorporated and met by both accused products as described in Sections III and V above. The additional limitation of Claim 12, and OWS's dual theories of literal infringement and doctrine of equivalents, are addressed below.
Additional Limitation of Claim 12
A. Literal Infringement Analysis
[LITERAL]
OWS contends that the sub-wavelength grating structures in both accused products are "two-dimensional sub-wavelength gratings having periodic features in two orthogonal in-plane directions" within the meaning of Claim 12. The evidence supporting this contention is as follows:
Benchmark SEM Evidence — LumiLink 800G-DR8: Benchmark's top-down SEM images of the grating coupler in the LumiLink 800G-DR8 reveal a periodic structure with features arranged in a two-dimensional pattern. The SEM images show a grid-like arrangement of grating features — specifically, periodic holes or pillars (depending on the etch polarity) arranged with periodicity in both the x-direction and the y-direction on the plane of the PIC. The periodicity in both in-plane directions is visible at multiple magnifications and is confirmed by Fourier-transform analysis of the SEM images, which shows distinct spatial frequency peaks corresponding to two orthogonal in-plane periodicities. [Benchmark-800G-DR8-021, Fig. 10(b) (annotated top-down SEM showing bidirectional periodicity; inset shows FFT spectrum with two orthogonal frequency peaks); Benchmark-800G-DR8-021, Fig. 10(c) (higher-magnification SEM showing individual grating elements in grid arrangement).]
Benchmark SEM Evidence — LumiEdge 1600G-LR: Similar two-dimensional periodic features are observed in the grating coupler of the LumiEdge 1600G-LR. [Benchmark-1600G-LR-017, Fig. 9(b) (annotated top-down SEM showing bidirectional periodicity in the LumiEdge grating coupler); Benchmark-1600G-LR-017, Fig. 9(c) (higher-magnification SEM).] The grating geometry in the LumiEdge product is substantially similar to that of the LumiLink product, with periodic features in two orthogonal in-plane directions, though the specific pitch values and feature dimensions may differ slightly between the two products to account for differences in the products' coupling specifications.
Lumicore Design Documentation: Lumicore's design files describe the grating coupler geometry using design parameters for both in-plane directions, including separate pitch values (designated "Λx" and "Λy" in the design database), duty cycle values, and etch depth specifications for each direction. [LTC-PROD-049410 (grating design parameter table with columns for x-direction and y-direction parameters); LTC-PROD-049412 (CAD layout showing two-dimensional array of grating features with annotations).] This two-axis parameterization is consistent with and confirms that the grating is a two-dimensional structure with periodic features in two orthogonal in-plane directions.
Summary of Literal Infringement — Claim 12: OWS contends that the sub-wavelength grating structures in both accused products literally satisfy the "two-dimensional sub-wavelength grating having periodic features in two orthogonal in-plane directions" limitation. The physical evidence (SEM imaging) and Lumicore's own design files demonstrate that the grating features are arranged with periodicity in two orthogonal in-plane directions (x and y), constituting a two-dimensional sub-wavelength grating.
B. Doctrine of Equivalents Analysis (Alternative Theory for Claim 12)
[DOE]
In the alternative, and without waiving its literal infringement theory, OWS contends that, even if the Court determines that Lumicore's accused grating structures do not literally satisfy the "two-dimensional sub-wavelength grating" limitation of Claim 12, the accused structures infringe under the doctrine of equivalents.
1. Background — Prosecution History
During prosecution of the '015 Patent before the United States Patent and Trademark Office, the Examiner issued a final office action rejecting then-pending Claim 12 under 35 U.S.C. § 103 as obvious over U.S. Patent No. 8,412,007 (Bergmann) in combination with International Publication No. PCT/EP2015/071234 (Simonsen). The Bergmann reference disclosed a one-dimensional sub-wavelength grating coupler for silicon photonic applications, and the Simonsen reference disclosed a polarization-splitting grating coupler architecture. The Examiner reasoned that a person of ordinary skill in the art would have been motivated to combine Bergmann's one-dimensional sub-wavelength grating with Simonsen's polarization-splitting architecture to arrive at the claimed invention.
In response, the applicant (through prosecuting attorney Dr. Martin Chu) amended Claim 12 to add the limitation "two-dimensional sub-wavelength grating having periodic features in two orthogonal in-plane directions," which was not present in the original claim as filed. The applicant argued that the combination of Bergmann and Simonsen would not have suggested a two-dimensional sub-wavelength grating because Bergmann's grating was exclusively one-dimensional, and Simonsen did not teach or suggest a sub-wavelength grating at all. The Examiner allowed the amended claim.
OWS acknowledges that this amendment constitutes a narrowing amendment that triggers the Festo presumption that the applicant surrendered the territory between the original claim scope and the amended claim scope. However, as set forth below, OWS contends that this presumption is rebutted under the Festo framework.
2. Function-Way-Result Analysis
Even if Lumicore's accused grating structures are found not to literally embody a "two-dimensional sub-wavelength grating" as construed by the Court — for example, if the Court adopts a narrow construction requiring strict equal periodicity in both orthogonal in-plane directions, or requiring a specific geometric arrangement such as a square lattice — OWS contends that the accused structures infringe under the doctrine of equivalents based on the function-way-result test:
Function: The accused grating structure in both the LumiLink 800G-DR8 and the LumiEdge 1600G-LR performs substantially the same function as the claimed two-dimensional sub-wavelength grating — namely, coupling an input optical signal from an optical fiber into a photonic integrated circuit while simultaneously providing polarization diversity. Specifically, the accused grating structure efficiently couples both TE and TM polarization states of the input optical signal into separate on-chip waveguides. This is the same function performed by the claimed "two-dimensional sub-wavelength grating having periodic features in two orthogonal in-plane directions," which achieves polarization-diverse coupling by virtue of its two-dimensional periodicity.
Way: The accused structures achieve this function in substantially the same way as the claimed element — by employing a grating pattern with sub-wavelength features arranged to create diffraction conditions for coupling light of both orthogonal polarization states into on-chip waveguides. The accused structures use periodic or quasi-periodic features that interact with both in-plane polarization components of the optical field, creating the necessary phase-matching conditions for efficient coupling of each polarization state. Whether the features are arranged in a strict two-dimensional periodic array or in a quasi-periodic or apodized two-dimensional pattern, the fundamental mechanism of operation is the same: the grating features in both in-plane directions interact with the incident optical field to diffract and couple both TE and TM polarization components. The minor differences in the exact geometry of the grating features, if any, do not change the way the accused structures achieve polarization-diverse coupling.
Result: The accused structures achieve substantially the same result as the claimed element — efficient fiber-to-chip optical coupling with low insertion loss, low polarization-dependent loss, and polarization diversity, enabling high-bandwidth coherent transceiver operation in silicon photonic modules. The performance specifications of the accused products (including insertion loss, polarization-dependent loss, and coupling efficiency) are consistent with the performance described in the '015 Patent specification for the claimed two-dimensional sub-wavelength grating structure.
3. Prosecution History Estoppel Analysis
OWS acknowledges the narrowing amendment to Claim 12 during prosecution and the resulting Festo presumption that the applicant surrendered equivalents that are within the territory between the original and amended claim scope. See Festo Corp. v. Fenmore & Co., 535 U.S. 722, 740 (2002). However, OWS contends that the presumption of surrender is rebutted under the Festo framework for the following reasons:
Tangential Relation Exception: The Festo Court recognized that the presumption of surrender may be rebutted where "the rationale underlying the [narrowing] amendment [bore] no more than a tangential relation to the equivalent in question." Id. at 740–41. Here, the amendment adding "two-dimensional" to the sub-wavelength grating limitation was made to distinguish the Bergmann reference's one-dimensional grating coupler. The purpose of the amendment was to distinguish the dimensionality of the Bergmann grating — i.e., to establish that the claimed invention required a two-dimensional grating, as opposed to the one-dimensional grating disclosed in Bergmann. The amendment was not directed to surrendering the full range of two-dimensional grating geometries, quasi-two-dimensional variants, or specific arrangements of periodic features within a two-dimensional grating. To the extent the accused Lumicore grating structures employ a two-dimensional arrangement of features that differs in some respect from the literal scope of the claim as amended (e.g., a slightly non-uniform or apodized two-dimensional periodicity rather than a perfectly periodic two-dimensional array), this difference bears only a tangential relationship to the reason for the amendment, which was to distinguish one-dimensional gratings, not to limit the claim to a specific subset of two-dimensional grating configurations.
Unforeseeability Exception: The Festo Court also recognized that the presumption may be rebutted where "the equivalent [was] unforeseeable at the time of the amendment." Id. at 740. OWS contends that Lumicore's specific grating geometry — to the extent it is found not to be literally "two-dimensional" — was not foreseeable at the time of the 2021 amendment. The specific quasi-periodic or apodized two-dimensional grating variant employed by Lumicore was not described in the prior art available at the time of the amendment, and a person of ordinary skill in the art would not have foreseen this particular design alternative as falling outside the scope of the "two-dimensional sub-wavelength grating" limitation as amended.
A detailed prosecution history estoppel analysis is set forth in OWS's internal Prosecution History Estoppel Analysis — '015 Patent (dated October 12, 2024) and Doctrine of Equivalents Analysis Memorandum (dated September 5, 2024), which are incorporated herein by reference. OWS reserves the right to present expert testimony from Dr. Caroline Ashford, Professor of Electrical Engineering and Photonics at the Northfield Institute of Technology, supporting the doctrine of equivalents theory and the rebuttal of the Festo presumption at trial. Dr. Ashford's expert report on infringement is due June 15, 2025 pursuant to the Court's Scheduling Order.
4. Supporting Evidence for Doctrine of Equivalents Theory
The following evidence supports OWS's doctrine of equivalents theory for Claim 12:
•  Benchmark teardown photographs and SEM images comparing the accused grating structures to the claimed two-dimensional sub-wavelength grating, demonstrating the structural similarity and functional equivalence of the accused structures. [Benchmark-800G-DR8-021; Benchmark-1600G-LR-017.]
•  Lumicore's design files showing the grating geometry parameters, including periodicity data in both in-plane directions, duty cycle data, and etch depth specifications, demonstrating that the accused grating structures are designed to achieve the same polarization-diverse coupling function as the claimed two-dimensional sub-wavelength grating. [LTC-PROD-049410 through LTC-PROD-049415.]
•  Dr. Michaud's deposition testimony acknowledging the functional similarity of Lumicore's grating coupler to polarization-diverse grating couplers described in OWS's published patent applications and in the prior art. [Michaud Dep. Tr. at 120:5–121:18 ("Q: Would you agree that the grating coupler in the LumiLink product achieves a similar result to polarization-diverse grating couplers described in OWS's patents — that is, coupling both polarization states from a fiber into separate waveguides on chip? A: In terms of the end result, yes, the objective is similar. You're coupling both polarizations. But the specific design implementation is different. Q: But the function of coupling both polarizations is the same? A: At a high level, yes.").]*
•  Published technical literature in the field of silicon photonics confirming that the accused variant and the claimed two-dimensional sub-wavelength grating structure are recognized in the art as functional equivalents for polarization-diverse optical coupling. OWS will identify specific publications in its expert report.
VII. CLAIM 16 — DEPENDENT CLAIM (LITERAL INFRINGEMENT)
Dependency
Claim 16 depends from Claim 1 and incorporates all limitations of Claim 1. All elements of Claim 1 are met by both accused products as described in Section III above. The additional limitation of Claim 16 is addressed below.
Additional Limitation of Claim 16
Summary — Claim 16: The additional limitation of Claim 16 is literally met by both the LumiLink 800G-DR8 and the LumiEdge 1600G-LR. Both accused products include a coherent receiver circuit — comprising optical hybrids, balanced photodetectors, and transimpedance amplifiers — integrated on the same silicon PIC as the grating coupler. The coherent receiver circuit is configured to process both the first and second polarization components after coupling by the polarization-diverse grating coupler.
VIII. SUMMARY TABLE OF INFRINGEMENT CONTENTIONS BY ACCUSED PRODUCT
The following tables summarize OWS's infringement contentions for each asserted claim, organized by accused product. Detailed claim-by-claim, limitation-by-limitation analysis is set forth in Sections III through VII above.
LumiLink 800G-DR8
LumiEdge 1600G-LR
IX. RESERVATION OF RIGHTS
OWS reserves the right to amend, supplement, or modify these infringement contentions as additional discovery is obtained and as the case progresses, including but not limited to the following circumstances:
1.  Supplemental Document Productions. OWS anticipates receiving additional Lumicore design files, including RTL schematics, firmware source code, and photonic-IC layout files designated Highly Confidential — Source Code, which have been requested but not yet fully produced. Upon completion of OWS's review of these materials, OWS anticipates serving supplemental infringement contentions, currently expected in April 2025.
2.  Claim Construction Order. OWS reserves the right to update this claim chart following the Court's claim construction order, which is expected to issue following the Markman hearing scheduled for March 14, 2025. To the extent the Court's constructions of disputed claim terms differ from OWS's proposed constructions or from the constructions applied in this claim chart, OWS will conform its infringement contentions to the Court's constructions.
3.  Expert Analysis. OWS has retained Dr. Caroline Ashford, Professor of Electrical Engineering and Photonics at the Northfield Institute of Technology, as its technical expert on infringement. Dr. Ashford's expert report on infringement is due June 15, 2025 pursuant to the Court's Scheduling Order. OWS reserves the right to supplement or modify its infringement contentions based on Dr. Ashford's analysis, including her opinions on literal infringement, the doctrine of equivalents, and the technical functioning of the accused products.
4.  Additional Depositions. OWS anticipates deposing additional Lumicore personnel and third-party witnesses, including but not limited to the anticipated deposition of Melissa Chen (former Lumicore Senior Photonic Design Engineer, now employed at Veridian Photonics, Inc., San Jose, CA). Ms. Chen was a member of Lumicore's design team for the LumiLink 800G-DR8 and LumiEdge 1600G-LR and may provide testimony regarding Lumicore's design process for the accused products, including the selection and design of the grating coupler architecture and Lumicore's awareness of OWS's patents during product development. OWS reserves the right to supplement its infringement contentions based on testimony obtained from Ms. Chen and other witnesses.
5.  Induced and Contributory Infringement. OWS also asserts induced infringement under 35 U.S.C. § 271(b) and contributory infringement under 35 U.S.C. § 271(c) of the '015 Patent against Lumicore, as set forth in Counts V and VI of the Complaint (D.E. 1). Supporting contentions for those counts, including identification of specific acts of inducement and the specific components or materials sold by Lumicore that constitute a material part of the patented invention, are provided in the P.R. 3-1 Infringement Contentions served contemporaneously with this claim chart on September 16, 2024.
6.  Willful Infringement. OWS further asserts that Lumicore's infringement of the '015 Patent is willful, as set forth in Count VII of the Complaint (D.E. 1). OWS's willful infringement theory is based on, among other things: (a) FairPoint Licensing Group, LLC's May 15, 2023 supplemental licensing letter to Lumicore, which specifically identified the '015 Patent and the LumiLink 800G-DR8 as an accused product, thereby providing Lumicore with actual notice of the '015 Patent and its applicability to Lumicore's products; (b) Lumicore's subsequent launch of the LumiEdge 1600G-LR in the fourth quarter of 2023 with knowledge of the '015 Patent and without obtaining a license or opinion of counsel regarding non-infringement; and (c) Lumicore's express refusal to take a license under the '015 Patent on July 10, 2023, following OWS's licensing overture. Detailed willful infringement contentions are set forth in OWS's separate willful infringement submissions and in the P.R. 3-1 Infringement Contentions.
X. CERTIFICATION
The undersigned counsel of record for Plaintiff Optiwave Semiconductor Corp. hereby certify that the infringement contentions set forth in this claim chart have been prepared in good faith and are based on a reasonable investigation of the facts and applicable law. The investigation underlying these contentions includes, without limitation, a thorough review of: (i) the asserted claims of U.S. Patent No. 11,402,015 and their prosecution history before the United States Patent and Trademark Office; (ii) the Benchmark Semiconductor Analysis, LLC teardown reports for the LumiLink 800G-DR8 (June 2023) and LumiEdge 1600G-LR (February 2024); (iii) Lumicore Technologies, Inc.'s documents produced in discovery in this action, including photonic-IC design files, engineering specifications, and design rule documents; (iv) publicly available information about the accused products, including product datasheets, marketing materials, and published technical papers; and (v) deposition testimony of Dr. Sandra Michaud and Kevin Ng. Counsel further certify that the contentions set forth herein are not being presented for any improper purpose and are warranted by existing law or by a nonfrivolous argument for extending, modifying, or reversing existing law.
Respectfully submitted,
CALDERWOOD & HARKNESS LLP
By: ________
Alan Ngo, Responsible Partner California State Bar No. 247891 Admitted pro hac vice, E.D. Tex. (Order dated June 18, 2024) 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 Telephone: (213) 555-4700 Facsimile: (213) 555-4701
Email: ango@calderwoodharkness.com
Wendy Schultz, Lead Associate California State Bar No. 312456 Admitted pro hac vice, E.D. Tex. (Order dated June 18, 2024)
Omar Siddiqui, Working Associate California State Bar No. 325789 Admitted pro hac vice, E.D. Tex. (Order dated June 18, 2024)
WHITMORE & CALLAHAN LLP
By: ________
James "Jim" Callahan, Local Counsel Texas State Bar No. 03845612 110 North College Avenue, Suite 800 Tyler, TX 75702 Telephone: (903) 555-2200 Facsimile: (903) 555-2201
Email: jcallahan@whitmorecallahan.com
Attorneys for Plaintiff Optiwave Semiconductor Corp.
Date: September 16, 2024
XI. APPENDICES (REFERENCED BUT SEPARATELY BOUND)
The following appendices are referenced in this claim chart and are submitted as separately bound exhibits to OWS's P.R. 3-1 Infringement Contentions:
Appendix 1: Annotated Benchmark Teardown Photographs — LumiLink 800G-DR8
Appendix 1 contains cross-referenced figures from Benchmark Semiconductor Analysis, LLC's June 2023 teardown report for the LumiLink 800G-DR8, annotated to identify specific structures within the product that correspond to each claim limitation of the '015 Patent asserted in this claim chart. Annotations include labeled callouts identifying the photonic integrated circuit, the silicon substrate, the polarization-diverse grating coupler, the first and second grating regions, the first and second waveguides, the polarization rotator element, sub-wavelength grating features, two-dimensional grating periodicity, and coherent receiver circuit components (optical hybrids, balanced photodetectors, and transimpedance amplifiers). Each annotated figure is cross-referenced to the corresponding limitation in this claim chart by section and limitation number.
Appendix 2: Annotated Benchmark Teardown Photographs — LumiEdge 1600G-LR
Appendix 2 contains cross-referenced figures from Benchmark Semiconductor Analysis, LLC's February 2024 teardown report for the LumiEdge 1600G-LR, annotated in the same manner as Appendix 1 to identify specific structures corresponding to each claim limitation of the '015 Patent. Each annotated figure is cross-referenced to the corresponding limitation in this claim chart by section and limitation number.
Appendix 3: Lumicore Design Document Excerpts (Designated Highly Confidential — Attorneys' Eyes Only)
Appendix 3 contains compiled excerpts from Lumicore Technologies, Inc.'s documents produced in discovery that are cited in this claim chart, including photonic-IC layout files, CAD schematics, grating design parameter tables, engineering specifications, and design rule documents. Each excerpt is identified by Bates number (LTC-PROD-xxxxxx) and is cross-referenced to the corresponding citation in this claim chart. This appendix is designated HIGHLY CONFIDENTIAL — ATTORNEYS' EYES ONLY in its entirety pursuant to the Stipulated Protective Order entered in this action (D.E. 18).
Appendix 4: Relevant Deposition Transcript Excerpts
Appendix 4 contains compiled excerpts from the deposition transcripts of: (a) Dr. Sandra Michaud, Lumicore Chief Technology Officer, deposed November 19, 2024; and (b) Kevin Ng, Lead Engineer at Benchmark Semiconductor Analysis, LLC, deposed January 7, 2025. Each excerpt is identified by page and line number and is cross-referenced to the corresponding citation in this claim chart.
Appendix 5: Prosecution History Excerpts — '015 Patent
Appendix 5 contains relevant excerpts from the prosecution history (file wrapper) of U.S. Patent No. 11,402,015 before the United States Patent and Trademark Office, including: (a) the Examiner's office actions containing § 103 rejections of then-pending claims, including the rejection combining Bergmann (U.S. Patent No. 8,412,007) with Simonsen (PCT/EP2015/071234); (b) the applicant's responses and claim amendments, including the narrowing amendment to Claim 12 adding the "two-dimensional sub-wavelength grating" limitation; (c) the applicant's remarks and arguments distinguishing the prior art; and (d) the Examiner's notice of allowance. These prosecution history excerpts are provided in support of the doctrine of equivalents and prosecution history estoppel analysis set forth in Section VI.B of this claim chart.
END OF INFRINGEMENT CLAIM CHART — U.S. PATENT NO. 11,402,015 — CLAIMS 1, 5, 8, 12, AND 16
Claim Language | Accused Products / Evidence
"A silicon photonic transceiver module comprising:" | The LumiLink 800G-DR8 and the LumiEdge 1600G-LR are each silicon photonic transceiver modules within the meaning of the '015 Patent's preamble. Lumicore's own product datasheets for both accused products describe them as "silicon photonic" transceiver modules designed for data-center interconnect applications. See LumiLink 800G-DR8 Product Datasheet, Rev. 2.1 (March 2023), at 1 ("The LumiLink 800G-DR8 is a high-performance silicon photonic transceiver module . . ."); LumiEdge 1600G-LR Product Datasheet, Rev. 1.0 (October 2023), at 1 ("The LumiEdge 1600G-LR leverages Lumicore's proven silicon photonic platform . . ."). The Benchmark teardown analysis confirms that both products incorporate a silicon-based photonic integrated circuit ("PIC") substrate. [Benchmark-800G-DR8-012, Fig. 3 (die photograph showing silicon PIC); Benchmark-1600G-LR-008, Fig. 2 (die photograph showing silicon PIC).] Dr. Sandra Michaud, Lumicore's Chief Technology Officer, confirmed in her deposition that both the LumiLink 800G-DR8 and the LumiEdge 1600G-LR incorporate silicon photonic integration as the core platform technology. [Michaud Dep. Tr. at 87:14–88:5 ("Q: Is the LumiLink 800G-DR8 built on a silicon photonics platform? A: Yes, it is. Q: And the LumiEdge 1600G-LR? A: Same platform, yes.")]. To the extent the preamble is limiting, it is satisfied by both accused products.
Claim Language | Accused Products / Evidence
"a photonic integrated circuit formed on a silicon substrate;" | Both accused products contain a photonic integrated circuit fabricated on a silicon-on-insulator ("SOI") wafer, which constitutes a "silicon substrate" within the meaning of this limitation. The Benchmark teardown reports for both products include cross-sectional scanning electron microscope ("SEM") images that clearly show the layered structure of the PIC die, including the silicon substrate layer, the buried oxide ("box") layer, and the silicon device layer in which the photonic waveguide structures are formed. [Benchmark-800G-DR8-015, Fig. 5 (cross-sectional SEM image showing SOI layer stack with silicon substrate layer identified); Benchmark-1600G-LR-011, Fig. 4 (analogous cross-sectional SEM image).] Lumicore's internal design files confirm that both accused products are fabricated using an SOI-based process at a third-party foundry. [LTC-PROD-045892 through LTC-PROD-045901 (process specification documents referencing SOI wafer parameters, including substrate resistivity, box thickness, and device-layer thickness).] This limitation is met literally under OWS's proposed construction of "formed on a silicon substrate," which OWS proposes should be construed as "formed on or within a silicon-based wafer using semiconductor fabrication processes." This proposed construction is consistent with the intrinsic evidence, including the '015 Patent specification's description of embodiments fabricated on SOI wafers (see '015 Patent, col. 4, ll. 15–28), and is also consistent with the ordinary understanding of a person of ordinary skill in the art of silicon photonics, who would understand "silicon substrate" to encompass SOI wafer platforms. Even under Lumicore's proposed construction of this term (to the extent Lumicore disputes this term, which is also at issue in the parallel '193 Patent claim construction), the accused products satisfy this limitation because they are indisputably formed on silicon-based wafers.
Claim Language | Accused Products / Evidence
"a polarization-diverse grating coupler disposed on the photonic integrated circuit, the grating coupler configured to couple an input optical signal into the photonic integrated circuit;" | Both accused products incorporate a grating coupler structure disposed on the PIC that is configured to couple fiber-optic input signals from a single-mode optical fiber into on-chip waveguides. This grating coupler is polarization-diverse within the meaning of this limitation. Benchmark Teardown Evidence: The Benchmark teardown reports identify and photograph the grating coupler structures in both accused products. In the LumiLink 800G-DR8, the grating coupler is located on the receive side of the PIC die and is clearly visible in both optical microscopy and SEM imaging. [Benchmark-800G-DR8-018 through 020, Figs. 7–9 (optical photograph, top-down SEM, and high-magnification SEM of grating coupler structure).] In the LumiEdge 1600G-LR, an analogous grating coupler structure is identified. [Benchmark-1600G-LR-014 through 016, Figs. 6–8 (optical photograph, top-down SEM, and high-magnification SEM).] Polarization Diversity Under OWS's Proposed Construction: The grating coupler in both products is capable of coupling light of two orthogonal polarization states (TE and TM), thereby satisfying OWS's proposed construction of "polarization-diverse grating coupler" (i.e., "a grating coupler capable of coupling light of two orthogonal polarization states"). The Benchmark teardown analysis confirms that the grating coupler in each product is connected to two separate output waveguides, each carrying a different polarization component, which is the hallmark of a polarization-diverse design. Infringement Under Lumicore's Proposed Construction: Even under Lumicore's narrower proposed construction ("a two-dimensional grating coupler with a polarization-splitting element that simultaneously couples TE and TM modes"), the accused structures satisfy this limitation because: (1) The Benchmark teardown shows a two-dimensional periodic grating pattern in both products, with features arranged in a grid-like pattern visible in top-down SEM images. [Benchmark-800G-DR8-019, Fig. 8 (annotated top-down SEM showing bidirectional periodicity of grating features); Benchmark-1600G-LR-015, Fig. 7 (analogous image).] (2) The grating structure includes a polarization-splitting element that directs TE and TM polarization modes into separate on-chip waveguide paths, as confirmed by the dual-waveguide output architecture observed in the teardown. (3) Lumicore's own internal design specifications reference "dual-polarization grating coupler" functionality. [LTC-PROD-048723, at 3 ("The receive-side grating coupler provides dual-polarization coupling for coherent receiver operation.").] (4) Dr. Michaud confirmed in her deposition that the LumiLink 800G-DR8 uses "a grating coupler that handles both polarizations." [Michaud Dep. Tr. at 112:8–113:2 ("Q: Does the LumiLink 800G-DR8 use a grating coupler that handles both polarizations? A: It does, yes. The grating coupler on the receive path is designed to accept both TE and TM polarization states from the fiber.").]
Claim Language | Accused Products / Evidence
"wherein the grating coupler comprises a first grating region and a second grating region, the first grating region configured to couple a first polarization component of the input optical signal and the second grating region configured to couple a second polarization component of the input optical signal, the first and second polarization components being orthogonal;" | The grating coupler structures in both accused products comprise two distinct grating regions, each configured to couple a different orthogonal polarization component of the input optical signal. LumiLink 800G-DR8: The Benchmark teardown identifies two distinct grating regions within the coupler structure of the LumiLink 800G-DR8. The first grating region is configured to couple the TE polarization component of the input optical signal, and the second grating region is configured to couple the TM polarization component into a separate waveguide channel. These regions are clearly delineated in the annotated SEM images provided in the teardown report. [Benchmark-800G-DR8-020, Fig. 9 (annotated top-down SEM with region boundaries marked, showing Region A (TE coupling) and Region B (TM coupling)).] The two regions exhibit distinct grating parameters (pitch, duty cycle, and orientation) consistent with coupling different polarization states, as measured by Benchmark's metrology analysis. LumiEdge 1600G-LR: An analogous dual-region grating coupler architecture is observed in the LumiEdge 1600G-LR, with the same fundamental design approach of dedicating separate grating regions to each polarization component. [Benchmark-1600G-LR-016, Fig. 8 (annotated top-down SEM with analogous region identification).] Orthogonality: TE (transverse electric) and TM (transverse magnetic) modes are orthogonal polarization states by definition in the field of optics and photonics. A person of ordinary skill in the art would understand the TE and TM modes coupled by the grating regions in the accused products to constitute "orthogonal" polarization components within the meaning of this claim limitation. Lumicore Design Documentation: Lumicore's internal photonic design rule document for the accused products explicitly describes the grating coupler as having "separate coupling regions for each polarization axis." [LTC-PROD-049115, p. 14 ("The grating coupler architecture employs separate coupling regions for each polarization axis, with Region 1 optimized for TE-mode coupling and Region 2 optimized for TM-mode coupling.").] This document further specifies that the two regions are designed with different grating parameters to achieve efficient coupling for each respective polarization mode, confirming that the accused products embody this claim limitation.
Claim Language | Accused Products / Evidence
"a first waveguide optically connected to the first grating region to receive the first polarization component; and a second waveguide optically connected to the second grating region to receive the second polarization component." | Both accused products include two separate on-chip waveguides extending from the grating coupler, each optically connected to one of the two grating regions and carrying one of the two orthogonal polarization components. LumiLink 800G-DR8: The Benchmark teardown identifies a first waveguide that is optically connected to the first grating region (Region A) and carries the TE-mode signal, and a second waveguide that is optically connected to the second grating region (Region B) and carries the TM-mode signal. Both waveguides route the coupled signals to downstream processing elements on the PIC. [Benchmark-800G-DR8-022, Fig. 11 (SEM image showing two waveguide outputs from grating coupler, annotated with "WG1 — TE" and "WG2 — TM"); Benchmark-800G-DR8-024, Fig. 13 (waveguide routing layout derived from optical microscopy and SEM stitching, showing paths of both waveguides from grating coupler to coherent receiver block).] LumiEdge 1600G-LR: An analogous waveguide pair is observed in the LumiEdge 1600G-LR, with a first waveguide connected to the first grating region and a second waveguide connected to the second grating region. [Benchmark-1600G-LR-018, Fig. 10 (annotated SEM image showing dual waveguide outputs from grating coupler).] Lumicore Mask Layout Files: Lumicore's photonic-IC mask-layout files, produced in discovery, confirm the presence of two output waveguides from the grating coupler element in both accused products. [LTC-PROD-049230 through LTC-PROD-049235 (CAD layout excerpts showing grating coupler cell with two waveguide output ports, labeled "TEout" and "TMout" in the design database).] The mask layout data is consistent with the physical structures observed in the Benchmark teardown analysis and confirms that the dual-waveguide architecture is an intentional design feature, not an artifact.
Claim Language | Accused Products / Evidence
"The silicon photonic transceiver module of claim 1, further comprising a polarization rotator element disposed on the photonic integrated circuit, the polarization rotator element configured to rotate the polarization of one of the first polarization component or the second polarization component such that both the first polarization component and the second polarization component propagate in a same polarization mode in their respective waveguides." | Both accused products include a polarization rotator element disposed on the photonic integrated circuit that rotates the polarization of the TM-mode component into the TE mode after coupling by the grating coupler, so that both waveguide paths carry TE-mode signals for downstream coherent processing. This is a standard and well-known design approach in polarization-diverse receiver architectures in silicon photonic systems, where downstream optical components (e.g., optical hybrids, photodetectors) are typically optimized for TE-mode operation. Benchmark Teardown Evidence: The Benchmark teardown identifies a dedicated polarization rotator structure on the PIC of both accused products, located downstream of the second waveguide output of the grating coupler (i.e., the waveguide carrying the TM-mode component). [Benchmark-800G-DR8-025, Fig. 14 (SEM image of polarization rotator structure on LumiLink 800G-DR8 PIC, annotated with dimensional measurements); Benchmark-1600G-LR-019, Fig. 11 (analogous SEM image of polarization rotator structure on LumiEdge 1600G-LR PIC).] The polarization rotator in both products is a mode-evolution-based rotator, which gradually converts the TM0 mode to the TE0 mode over a tapered waveguide section, as confirmed by the physical geometry observed in the teardown. Lumicore Design Documentation: Lumicore's design documentation explicitly describes the presence and function of the polarization rotator element. [LTC-PROD-049301, at 7 ("Following the grating coupler's TM output waveguide, a TM-to-TE polarization rotation stage converts the coupled TM-mode signal into TE-mode for compatibility with the downstream coherent receiver optical hybrid, which operates in TE mode.").] This document further specifies the design parameters of the rotator, including its length, taper geometry, and target extinction ratio for polarization conversion. Deposition Testimony: Kevin Ng of Benchmark confirmed in his deposition that the teardown analysis revealed a dedicated polarization rotator element downstream of the grating coupler's second waveguide output in both accused products. [Ng Dep. Tr. at 45:10–46:3 ("Q: Did you identify a polarization rotator element in the LumiLink 800G-DR8? A: Yes, we did. It was located immediately downstrea

INFRINGEMENT CLAIM CHART

U.S. PATENT NO. 11,402,015

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

I. INTRODUCTION AND OVERVIEW

II. CLAIM CHART FORMAT AND CONVENTIONS

VIII. SUMMARY TABLE OF INFRINGEMENT CONTENTIONS BY ACCUSED PRODUCT

IX. RESERVATION OF RIGHTS

X. CERTIFICATION

CALDERWOOD & HARKNESS LLP

WHITMORE & CALLAHAN LLP

XI. APPENDICES (REFERENCED BUT SEPARATELY BOUND)

Record

Parties

Dates

Amounts