1014-00004 · Hawthorne Vega & Cruz LLP · Injunctive Relief

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UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

OPTIWAVE SEMICONDUCTOR CORP.,

Plaintiff,

LUMICORE TECHNOLOGIES, INC.,

Defendant.

Civil Action No. 2:24-cv-00319-JRG

[PROPOSED] ORDER GRANTING PERMANENT INJUNCTION

I. RECITALS

WHEREAS, Plaintiff Optiwave Semiconductor Corp. ("OWS"), a corporation organized and existing under the laws of the State of Delaware, with its principal place of business located at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054, filed its original Complaint in this action on April 22, 2024, asserting claims for patent infringement against Defendant Lumicore Technologies, Inc. ("Lumicore"), a corporation organized and existing under the laws of the State of Delaware, with its principal place of business located at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. OWS's Complaint, as subsequently amended, asserted infringement of four United States patents: U.S. Patent No. 10,234,847 (the "'847 Patent"), entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss"; U.S. Patent No. 10,891,193 (the "'193 Patent"), entitled "High-Bandwidth coherent Optical Transceiver Integrated on Silicon Substrate"; U.S. Patent No. 9,678,562 (the "'562 Patent"), entitled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks"; and U.S. Patent No. 11,402,015 (the "'015 Patent"), entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers" (collectively, the "Asserted Patents"); and

WHEREAS, this matter proceeded to jury trial beginning on February 2, 2026, before a jury duly empaneled and sworn, with trial concluding on February 20, 2026, and the jury thereafter returning a verdict in favor of OWS on all asserted claims of infringement and validity; and

WHEREAS, the jury found, based on a preponderance of the evidence presented at trial, that Lumicore has infringed one or more valid claims of each of the Asserted Patents through the manufacture, use, sale, offer for sale, and/or importation of the following accused products: (a) the LumiLink 400G-ZR+ transceiver module; (b) the LumiLink 800G-DR8 transceiver module; and (c) the LumiEdge 1600G-LR transceiver module (collectively, the "Enjoined Products"); and

WHEREAS, the jury further found, by clear and convincing evidence, that Lumicore's infringement of the Asserted Patents was willful, as reflected in the jury's answers to Verdict Form Questions Nos. 12 through 15; and

WHEREAS, the jury awarded compensatory damages to OWS in the amount of $__ for Lumicore's past infringement of the Asserted Patents; and

WHEREAS, OWS is the owner by assignment of the '847 Patent, which was filed on September 14, 2016, and issued on March 19, 2019, and which was originally assigned to Optiwave Semiconductor Corp.; and

WHEREAS, OWS is the owner by assignment of the '193 Patent, which was filed on April 7, 2017, and issued on January 12, 2021, and which was originally assigned to Optiwave Semiconductor Corp.; and

WHEREAS, OWS is the owner by assignment of the '562 Patent, which was filed on November 22, 2014, and issued on June 13, 2017, and which was originally assigned to Solara Optics, Inc., and was subsequently acquired by OWS pursuant to an Asset Purchase Agreement dated June 15, 2018, for a total consideration of $34.5 million, and all right, title, and interest in the '562 Patent were duly assigned and recorded with the United States Patent and Trademark Office; and

WHEREAS, OWS is the owner by assignment of the '015 Patent, which was filed on August 30, 2019, and issued on August 2, 2022, and which was originally assigned to Optiwave Semiconductor Corp.; and

WHEREAS, all maintenance fees for each of the Asserted Patents are current as of the date of entry of this Order, and each of the Asserted Patents remains valid and in force; and

WHEREAS, OWS has moved this Court for entry of a permanent injunction pursuant to 35 U.S.C. § 283, and the Court has considered OWS's motion, the parties' briefs and supporting evidence, the trial record, the jury verdict, and the arguments of counsel, and has evaluated each of the four factors set forth by the Supreme Court in Northgate Group v. MercExchange, L.L.C., 547 U.S. 388 (2006); and

WHEREAS, with respect to the first Cascade Holdings factor — irreparable harm — the Court finds that OWS has demonstrated, by a preponderance of the evidence, that it has suffered and will continue to suffer irreparable harm in the absence of a permanent injunction, based on the following findings:

(a) OWS is a practicing entity that directly competes with Lumicore in the silicon-photonics transceiver market for hyperscale data centers, cloud-service providers, and high-performance computing applications. OWS designs, manufactures, and sells transceiver modules that practice the Asserted Patents, including its OWS-400ZR, OWS-800XR, and OWS-1600DR product families;

(b) OWS is the third-largest United States supplier of silicon-photonics transceiver modules, with fiscal year 2023 total revenue of approximately $487.3 million, of which approximately $310 million — representing approximately 63.6% of total revenue — is directly attributable to products embodying the patented technology of the Asserted Patents;

(c) The trial evidence, including the testimony of OWS's Vice President of Sales, Karen Whitfield, and the expert testimony of Dr. Lawrence Keating, demonstrated that average selling prices for 400G-ZR transceiver modules declined by approximately 18.7% from the third quarter of 2022 through the fourth quarter of 2023, and that this price erosion was attributable in significant part to Lumicore's entry into the market with the infringing LumiLink 400G-ZR+ product at aggressive price points made possible by Lumicore's avoidance of the research and development costs and licensing obligations that OWS and its legitimate licensees bear;

(d) The trial evidence further demonstrated customer diversion and loss of design-in opportunities at major hyperscale data-center operators where OWS and Lumicore compete head-to-head. Evidence showed that at least seven major hyperscale customers either switched from OWS products to Lumicore's infringing products or split their procurement between OWS and Lumicore during the period of infringement, and that Lumicore secured design-in wins at twelve of the top twenty hyperscale data-center operators globally, in direct competition with OWS;

(e) OWS holds a substantial intellectual property portfolio consisting of 142 issued United States patents and 58 pending patent applications, and this patent portfolio is central to OWS's competitive position in the silicon-photonics transceiver market. Continued infringement by Lumicore undermines the value of this portfolio and erodes OWS's ability to license its technology to willing licensees on commercially reasonable terms, as other market participants may perceive that OWS is unable or unwilling to enforce its intellectual property rights;

(f) Monetary damages alone cannot fully compensate OWS for the ongoing loss of market share, the continuing erosion of average selling prices, the loss of design-in opportunities that determine product selection for multi-year deployment cycles, and the cumulative erosion of OWS's competitive position in a rapidly evolving market;

and

WHEREAS, with respect to the second Cascade Holdings factor — inadequacy of legal remedies — the Court finds that monetary damages are inadequate to compensate OWS fully for Lumicore's continued infringement, based on the following findings:

(a) Lumicore's ongoing sales of infringing products cause continuing and difficult-to-quantify harms, including disruption of customer relationships developed over years of collaborative design engagement, reputational harm arising from the erosion of OWS's perceived technological differentiation, and further price erosion across an entire product category;

(b) The calculation of future lost profits and other forward-looking damages with reasonable precision is rendered impracticable by the rapid evolution of market conditions in the silicon-photonics transceiver industry, including the anticipated transition to next-generation 1.6T and 3.2T standards, the entry and exit of competitors, and the dynamic nature of procurement decisions by hyperscale data-center operators;

(c) OWS's patented innovations represent core differentiating technology in the design and manufacture of silicon-photonics transceiver modules, and monetary compensation, while appropriate for past harm, does not restore OWS's exclusive right to practice its own inventions or fully remedy the ongoing competitive injury caused by the sale of infringing products;

and

WHEREAS, with respect to the third Cascade Holdings factor — balance of hardships — the Court finds that the balance of hardships tips in favor of OWS, based on the following findings:

(a) OWS has been harmed by Lumicore's infringement since at least the third quarter of 2022, when Lumicore launched the LumiLink 400G-ZR+ transceiver module, and has continued to suffer harm as Lumicore expanded its infringing product line with the LumiLink 800G-DR8 and the LumiEdge 1600G-LR;

(b) While Lumicore estimates that approximately 42% of its total product revenue — based on fiscal year 2023 total revenue of approximately $312.6 million — is attributable to the Enjoined Products and would be at risk from an injunction, and that a complete redesign to non-infringing alternatives would require approximately 18 to 24 months, this hardship is substantially mitigated by the Transition Period provided in Section IV of this Order, which affords Lumicore eighteen (18) months to fulfill existing contractual commitments and to design around the Asserted Patents;

(c) Lumicore was on actual notice of OWS's patent rights since at least January 15, 2023, when FairPoint Licensing Group, LLC, acting on behalf of OWS, sent a detailed licensing letter to Lumicore's General Counsel, Raymond Bautista, identifying the '847 Patent, the '193 Patent, and the '562 Patent, and offering to engage in licensing discussions. Lumicore acknowledged receipt of this letter but declined to negotiate a license and instead chose to continue and expand its infringing activities. Following issuance of the '015 Patent, FairPoint Licensing Group, LLC sent a supplemental notice letter on May 15, 2023, identifying the '015 Patent, yet Lumicore nevertheless proceeded to launch the LumiEdge 1600G-LR transceiver module in the fourth quarter of 2023 with full knowledge of OWS's patent portfolio;

(d) The jury's finding that Lumicore's infringement was willful further weighs against Lumicore in the balance-of-hardships analysis. A party that infringes patent rights willfully and in the face of actual notice is not well positioned to claim undue hardship from the enforcement of those same patent rights. See i4i Ltd. P'ship v. Kestrel Partners LLC, 598 F.3d 831, 862 (Fed. Cir. 2010), aff'd, 564 U.S. 91 (2011);

(e) The Transition Period set forth in Section IV below provides Lumicore with a reasonable period of eighteen (18) months to wind down sales of Enjoined Products, to satisfy pre-existing contractual commitments, and to develop and bring to market redesigned products that do not infringe the Asserted Patents, thereby substantially reducing any hardship that might otherwise flow from the entry of an immediate and absolute injunction;

and

WHEREAS, with respect to the fourth Cascade Holdings factor — public interest — the Court finds that the public interest favors the entry of a permanent injunction, based on the following findings:

(a) The public has a strong interest in the enforcement of valid patent rights, which provides the incentive for the investment in research and development that drives innovation. The patent system is designed to encourage innovation by granting inventors the exclusive right to practice their inventions for a limited time, and the enforcement of that exclusivity serves the public interest;

(b) There is no evidence in the trial record that the Enjoined Products serve a critical public health, safety, or essential-infrastructure need that cannot be met by non-infringing alternatives available from OWS itself or from other suppliers in the silicon-photonics transceiver market. The hyperscale data-center transceiver market includes multiple suppliers, and OWS's own competing products are available to meet customer demand;

(c) The public interest is served by encouraging market participants to respect intellectual property rights and to negotiate licenses in good faith, rather than to infringe with impunity and force patent holders to engage in protracted and expensive litigation to vindicate their rights. Denial of injunctive relief in the face of willful infringement would send a signal to the market that the cost of infringement is merely a backward-looking royalty, which would undermine the incentives that the patent system is designed to provide;

NOW, THEREFORE, having considered the foregoing, the parties' submissions, the trial record, and the applicable law, and good cause appearing, the Court hereby ORDERS as follows:

II. INJUNCTIVE PROVISIONS — CORE PROHIBITIONS

1. IT IS HEREBY ORDERED that Defendant Lumicore Technologies, Inc., its officers (including, but not limited to, Chief Executive Officer Thomas Kessler, Chief Technology Officer Dr. Sandra Michaud, General Counsel Raymond Bautista, Vice President of Product Development Dr. Eric Dalmqvist, and Chief Financial Officer Janet Moreno), directors, agents, servants, employees, representatives, affiliates, subsidiaries, successors, and assigns, and all persons in active concert or participation with any of the foregoing who receive actual notice of this Order, are hereby permanently ENJOINED and RESTRAINED from engaging in any of the following activities:

(a) Making. Manufacturing, fabricating, assembling, or having manufactured, fabricated, or assembled (including through contract manufacturers, foundries, packaging houses, or other third parties), anywhere in the world for importation into or sale within the United States, any of the following products (collectively, the "Enjoined Products"):

(i) LumiLink 400G-ZR+ transceiver modules (including all variants, configurations, and sub-models thereof);

(ii) LumiLink 800G-DR8 transceiver modules (including all variants, configurations, and sub-models thereof); and

(iii) LumiEdge 1600G-LR transceiver modules (including all variants, configurations, and sub-models thereof).

(b) Using. Using, testing, demonstrating, deploying, or otherwise practicing any of the Enjoined Products within the United States, including for purposes of product evaluation, benchmarking, customer demonstrations, trade-show exhibitions, or internal deployment.

(c) Selling. Selling or offering to sell, directly or indirectly, any of the Enjoined Products within the United States, including through any distributor, reseller, channel partner, or online marketplace.

(d) Importing. Importing or causing to be imported into the United States any of the Enjoined Products, whether in finished form, partially assembled form, or as components intended for assembly into Enjoined Products within the United States.

(e) Colorable Imitations. Making, using, selling, offering to sell, or importing into the United States any product, device, module, or system that is a colorable imitation of any of the Enjoined Products, or that is not more than colorably different from any of the Enjoined Products, and that infringes any claim of U.S. Patent No. 10,234,847, U.S. Patent No. 10,891,193, U.S. Patent No. 9,678,562, or U.S. Patent No. 11,402,015. For the avoidance of doubt, redesigned products that do not infringe any valid claim of the Asserted Patents are not subject to this Order. Lumicore may seek a determination from this Court, pursuant to the Redesign Clearance Procedure set forth in Section VII below, that any redesigned product falls outside the scope of this Order before commercializing such product.

III. ENJOINED PRODUCTS — DEFINITION

2. As used in this Order, the term "Enjoined Products" means the LumiLink 400G-ZR+ transceiver module, the LumiLink 800G-DR8 transceiver module, and the LumiEdge 1600G-LR transceiver module, as manufactured and sold by Lumicore during the period of infringement, including all variants, configurations, sub-models, and successor versions thereof that incorporate the same infringing features and functionalities identified at trial and found by the jury to infringe the Asserted Patents.

IV. SUNSET PROVISION — TRANSITION PERIOD FOR EXISTING COMMITMENTS

3. Eighteen-Month Transition Period. Notwithstanding the prohibitions set forth in Section II above, Lumicore shall have a period of eighteen (18) months from the date of entry of this Order (the "Transition Period") during which Lumicore may continue to fulfill existing binding contractual obligations for the delivery of Enjoined Products, provided that such contractual obligations were entered into prior to the date of entry of this Order and are documented in writing. During the Transition Period, Lumicore may continue to manufacture (or have manufactured) and deliver Enjoined Products solely to the extent necessary to fulfill such pre-existing contracts, subject to the conditions set forth in this Section IV.

4. Conditions of the Transition Period. The Transition Period is subject to each and all of the following conditions:

(a) Certified Contract List. Within thirty (30) calendar days of the date of entry of this Order, Lumicore shall provide to OWS's counsel of record, Calderwood & Harkness LLP, Attention: Alan Ngo, 350 South Grand Avenue, 48th Floor, Los Angeles, California 90071, a complete and certified list of all existing contracts requiring delivery of Enjoined Products (the "Certified Contract List"). The Certified Contract List shall include, for each such contract: (i) the identity of the customer; (ii) the specific Enjoined Product(s) covered by the contract; (iii) the quantity and aggregate dollar value of remaining deliverables under the contract as of the date of entry of this Order; (iv) the scheduled delivery dates for all remaining deliverables; and (v) a true and correct copy of each such contract, including all amendments, purchase orders, and statements of work. The Certified Contract List and all accompanying contract documents shall be treated as "Highly Confidential — Attorneys' Eyes Only" under the Stipulated Protective Order entered in this action (Dkt. No. 47), if Lumicore so designates.

(b) No New Contracts. Lumicore shall not enter into any new contracts, extend any existing contracts, amend any existing contracts to increase quantities or extend delivery schedules, or accept any new purchase orders for Enjoined Products after the date of entry of this Order. Any attempt by Lumicore to enter into, extend, or amend any contract in contravention of this provision shall be void and of no effect, and shall constitute a violation of this Order.

(c) Ongoing Royalty. Lumicore shall pay to OWS a running royalty of _% on all net sales of Enjoined Products made during the Transition Period. For purposes of this provision, "net sales" shall mean gross revenue received by Lumicore from the sale of Enjoined Products, less returns, allowances, and shipping charges actually credited to customers. Royalty payments shall be made quarterly, within thirty (30) calendar days following the end of each calendar quarter (i.e., March 31, June 30, September 30, and December 31), and each payment shall be accompanied by a detailed accounting statement setting forth the number of units of each Enjoined Product sold during the preceding quarter, the gross revenue and net sales for each Enjoined Product, the royalty calculation, and the identity of each customer to whom Enjoined Products were sold. OWS proposes that the Court set the ongoing royalty rate at no less than 8.5%, which is the reasonable royalty rate established at trial through the testimony of OWS's damages expert, Dr. Lawrence Keating, based on a Georgia-Pacific analysis supported by five comparable licenses with royalty rates ranging from 6.5% to 10.2%.

(d) Absolute Termination. At the conclusion of the Transition Period — that is, eighteen (18) months from the date of entry of this Order — all rights to make, use, sell, offer to sell, or import Enjoined Products shall terminate absolutely and without exception, and the full scope of the injunction set forth in Section II shall apply in its entirety. No further sales of Enjoined Products shall be permitted after expiration of the Transition Period, regardless of whether any pre-existing contractual obligations remain unfulfilled.

5. No Extension of the Transition Period. The Transition Period shall not be extended absent a showing of extraordinary circumstances demonstrated by clear and convincing evidence and with the written consent of OWS, or by further order of this Court upon a noticed motion filed by Lumicore with at least thirty (30) days' advance notice to OWS. The mere existence of unfulfilled contractual obligations at the expiration of the Transition Period shall not, standing alone, constitute extraordinary circumstances warranting an extension.

V. REPORTING AND COMPLIANCE OBLIGATIONS

6. Designation of Compliance Officer. Within fourteen (14) calendar days of the date of entry of this Order, Lumicore shall designate a senior officer at the level of Vice President or above (the "Compliance Officer") who shall be personally responsible for ensuring Lumicore's compliance with all provisions of this Order. Lumicore shall provide written notice of such designation to OWS's counsel of record, identifying the Compliance Officer by name, title, and business contact information. If the Compliance Officer changes at any time during the term of this Order, Lumicore shall provide written notice of the new designation within seven (7) calendar days of the change.

7. Quarterly Compliance Reports. Beginning ninety (90) calendar days after the date of entry of this Order, and continuing on a quarterly basis thereafter for a period of three (3) years from the date of entry of this Order, Lumicore shall provide to OWS's counsel of record a written compliance report (each, a "Quarterly Compliance Report"). Each Quarterly Compliance Report shall be signed under penalty of perjury by the Compliance Officer and shall certify to the following:

(a) That during the preceding calendar quarter, Lumicore has not manufactured, used, sold, offered to sell, or imported any Enjoined Products or colorable imitations thereof outside the scope permitted by the Transition Period provisions of Section IV of this Order;

(b) A detailed accounting of any sales of Enjoined Products made during the preceding calendar quarter pursuant to the Transition Period, including the number of units sold, the gross revenue and net sales attributable to such sales, the identity of each customer, and the amount of royalty payments made or due to OWS in connection with such sales;

(c) A description of any redesigned or successor products introduced or commercialized by Lumicore during the preceding calendar quarter in the silicon-photonics transceiver product category, together with a statement regarding whether Lumicore contends that such products are non-infringing, without waiving any applicable attorney-client privilege, work-product protection, or other privilege;

(d) A certification that Lumicore has not entered into any new contracts, extended any existing contracts, or accepted any new purchase orders for Enjoined Products in violation of Section IV(b) of this Order.

All Quarterly Compliance Reports and accompanying documentation shall be designated and treated as "Highly Confidential — Attorneys' Eyes Only" under the Stipulated Protective Order entered in this action (Dkt. No. 47).

8. Right of Inspection. OWS shall have the right, upon not less than thirty (30) calendar days' written notice to Lumicore, to retain an independent third-party auditor (the "Auditor"), reasonably acceptable to Lumicore (such acceptance not to be unreasonably withheld, conditioned, or delayed), to conduct an audit of Lumicore's compliance with this Order. The Auditor shall be entitled to inspect and copy relevant books, records, financial statements, sales data, manufacturing records, inventory records, shipping records, and other documents and materials reasonably related to compliance with this Order, and to inspect relevant facilities, during normal business hours and upon reasonable advance coordination with Lumicore's Compliance Officer. The costs of such audit shall be borne by OWS; provided, however, that if the audit reveals a material violation of this Order, all costs of the audit, including the Auditor's fees and expenses, shall be borne by Lumicore. All information obtained through any such audit shall be subject to the confidentiality provisions of the Stipulated Protective Order entered in this action, and the Auditor shall execute the acknowledgment required by that Protective Order before commencing any inspection. OWS shall not exercise its right of inspection more than once in any twelve-month period absent a showing of good cause.

VI. ENFORCEMENT PROVISIONS

9. Contempt. Any violation of this Order may be punished as contempt of Court pursuant to the inherent powers of this Court and applicable provisions of federal law. In any contempt proceeding arising from an alleged violation of this Order, the prevailing party shall be entitled to recover its reasonable attorneys' fees and costs incurred in connection with such proceeding.

10. Supplemental Damages. Nothing in this Order shall preclude OWS from seeking additional damages, including supplemental damages pursuant to 35 U.S.C. § 284 and/or enhanced damages for willful infringement, for any infringement by Lumicore occurring after the date of the jury's verdict or after the date of entry of this Order. The Court's entry of this permanent injunction is without prejudice to OWS's right to pursue any and all remedies available at law or in equity for post-injunction infringement.

11. No Bond Required. The Court finds that no bond is required to be posted by OWS in connection with this permanent injunction. In reaching this determination, the Court has considered the following: (a) the jury has already adjudicated Lumicore's infringement and the validity of the Asserted Patents following a full trial on the merits; (b) the Transition Period provided in Section IV substantially mitigates any potential harm to Lumicore arising from the entry of this Order; and (c) this injunction is permanent in nature, entered following a final adjudication on the merits, and is distinguishable from a preliminary injunction where the risk of an erroneous deprivation is greater. The Court has considered the provisions of Federal Rule of Civil Procedure 65(c) and finds that the Rule's security requirement is not mandatory in the context of a permanent injunction entered following a full trial, and that the equities of this case do not warrant the imposition of a bond requirement. See Westvale Holdings. v. Emulex Corp., 732 F.3d 1325, 1339 (Fed. Cir. 2013) (noting district court's discretion regarding bond in permanent injunction context).

VII. REDESIGN CLEARANCE PROCEDURE

12. Voluntary Clearance Process. If, at any time after the entry of this Order, Lumicore develops a redesigned product that it contends does not infringe any valid claim of the Asserted Patents, Lumicore may seek a determination from this Court that the redesigned product is not subject to the prohibitions of this Order. To initiate such a determination, the following procedure shall apply:

(a) Lumicore shall serve upon OWS's counsel of record a detailed written description of the redesigned product (the "Redesign Submission"), including: (i) complete technical specifications; (ii) schematics, block diagrams, and design documentation sufficient to enable a person of ordinary skill in the art to understand the structure and operation of the redesigned product; and (iii) a claim-by-claim non-infringement analysis for each asserted claim of each of the Asserted Patents, setting forth in detail the basis for Lumicore's contention that the redesigned product does not infringe, whether literally or under the doctrine of equivalents. The Redesign Submission shall be served at least sixty (60) calendar days before any planned commercialization of the redesigned product.

(b) OWS shall have thirty (30) calendar days from receipt of the Redesign Submission to serve a written response, either: (i) consenting that the redesigned product falls outside the scope of this Order and is not an infringing colorable imitation of any Enjoined Product; or (ii) objecting to Lumicore's characterization and setting forth the bases for OWS's contention that the redesigned product falls within the scope of this Order.

(c) If OWS consents, the parties shall file a joint stipulation with this Court confirming that the redesigned product is not subject to this Order, and Lumicore may proceed to commercialize the redesigned product upon entry of an order approving such stipulation.

(d) If OWS objects, either party may file a motion with this Court for a determination regarding whether the redesigned product is subject to this Order. Such motion shall be resolved on an expedited basis. Lumicore shall not commercialize the redesigned product in the United States until the Court has ruled on the motion, unless Lumicore obtains a written stipulation from OWS or an order from this Court permitting interim sales pending resolution of the motion.

All materials exchanged or filed in connection with the Redesign Clearance Procedure shall be subject to the Stipulated Protective Order entered in this action.

VIII. SCOPE AND CONSTRUCTION

13. Patents Covered. This Order applies to the following United States patents:

(a) U.S. Patent No. 10,234,847, entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss," filed September 14, 2016, and issued March 19, 2019;

(b) U.S. Patent No. 10,891,193, entitled "High-Bandwidth coherent Optical Transceiver Integrated on Silicon Substrate," filed April 7, 2017, and issued January 12, 2021;

(c) U.S. Patent No. 9,678,562, entitled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks," filed November 22, 2014, and issued June 13, 2017; and

(d) U.S. Patent No. 11,402,015, entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," filed August 30, 2019, and issued August 2, 2022.

This Order shall remain in effect for the remaining life of each of the Asserted Patents, including any extensions thereof, unless earlier modified or dissolved by further order of this Court.

14. Relationship to Damages Award. This permanent injunction is in addition to, and not in lieu of, the compensatory damages awarded by the jury and any enhanced damages that may be awarded by the Court pursuant to 35 U.S.C. § 284. The ongoing royalty payable during the Transition Period, as set forth in Section IV(c) of this Order, is separate from and supplemental to the jury's damages award and compensates OWS for the continued use of its patented technology during the wind-down period.

15. Successors and Assigns. This Order shall be binding upon Lumicore Technologies, Inc. and upon any successor entity, whether by merger, acquisition, consolidation, reorganization, or otherwise, and upon any assignee of all or substantially all of Lumicore's assets related to the Enjoined Products. In the event of any change of ownership, merger, acquisition, or reorganization involving Lumicore or its assets related to the Enjoined Products, Lumicore (or its successor) shall provide written notice to OWS's counsel of record within fourteen (14) calendar days of the consummation of any such transaction, and shall take all steps necessary to ensure that the successor or assignee is bound by the terms of this Order.

16. Modification. This Order may be modified only upon motion by either party demonstrating changed circumstances warranting modification, filed with notice and an opportunity to be heard. The party seeking modification shall bear the burden of demonstrating that the requested modification is warranted.

IX. RETENTION OF JURISDICTION

17. This Court retains continuing and exclusive jurisdiction over this action and over the parties for the purpose of enforcing, modifying, or interpreting this Order, and for adjudicating any and all disputes arising from or related to compliance with this Order, including but not limited to contempt proceedings, motions for modification, disputes under the Redesign Clearance Procedure, and any claims for supplemental or enhanced damages for post-injunction infringement.

X. SERVICE

18. OWS shall serve a true and correct copy of this Order, within five (5) business days of entry, upon each of the following:

(a) Lumicore's lead trial counsel: Catherine "Kate" Rourke, Hawthorne Vega & Cruz LLP, 600 Congress Avenue, Suite 2400, Austin, Texas 78701;

(b) Lumicore's local counsel: Maria Garza, Trask Eddington LLP, 425 East Front Street, Suite 300, Tyler, Texas 75701;

(c) Lumicore's General Counsel: Raymond Bautista, Lumicore Technologies, Inc., 9200 Spectrum Boulevard, Building C, Austin, Texas 78759.

Service upon Lumicore's registered agent, National Agent Services Corp., 850 New Burton Road, Suite 201, Dover, Delaware 19904, is not required but may be effected at OWS's discretion as a matter of courtesy.

XI. EFFECTIVE DATE

19. This Order shall take effect immediately upon entry by the Clerk of Court for the Eastern District of Texas.

IT IS SO ORDERED.

SIGNED this _ day of ___, 2026.

________________________________________

THE HONORABLE JAMES R. GILSTRAP UNITED STATES DISTRICT JUDGE EASTERN DISTRICT OF TEXAS

SUBMITTED BY COUNSEL FOR PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.

CALDERWOOD & HARKNESS LLP

By: ________

Alan Ngo (CA Bar No. 247891; admitted pro hac vice) 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-7200 Facsimile: (213) 555-7201

Email: ango@calderwoodharkness.com

Marcus Delgado (TX Bar No. 24098317) 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-7200 Facsimile: (213) 555-7201

Email: mdelgado@calderwoodharkness.com

WHITMORE & CALLAHAN LLP

By: ________

James "Jim" Callahan (TX Bar No. 03871245) 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 555-4400 Facsimile: (903) 555-4401

Email: jcallahan@whitmorecallahan.com

Local Counsel for Plaintiff Optiwave Semiconductor Corp.

CERTIFICATE OF SERVICE

I hereby certify that on ____, 2026, a true and correct copy of the foregoing [Proposed] Order Granting Permanent Injunction was served upon all counsel of record via the Court's CM/ECF electronic filing system, which will send notification of such filing to all registered participants.

________________________________________

Alan Ngo

INTERNAL DRAFTING NOTES — CALDERWOOD & HARKNESS LLP WORK PRODUCT — NOT FOR FILING PRIVILEGED AND CONFIDENTIAL — ATTORNEY-CLIENT PRIVILEGE / WORK PRODUCT DOCTRINE

OPEN ITEMS AND ACTION ITEMS

1. Verdict-Dependent Placeholders. The following placeholders must be completed upon receipt of the jury's verdict and prior to filing:

(a) Damages amount (Recital paragraph referencing jury award);

(b) Specific claim findings — whether to reference specific infringed claims in the operative injunction language. Asserted claims at trial: Claims 1, 3, 5, 9, and 14 of the '847 Patent; Claims 1, 3, 7, 10, 15, and 18 of the '193 Patent; Claims 1, 4, 6, and 11 of the '562 Patent; Claims 1, 5, 8, 12, and 16 of the '015 Patent. Current draft refers generically to "valid and infringed claims as determined by the jury." Decision needed on whether specific claim enumeration strengthens or narrows the injunction — discuss with Alan Ngo.

2. Ongoing Royalty Rate. The ongoing royalty rate for the Transition Period is left blank for briefing post-verdict. OWS's position: at or above 8.5%, which is the reasonable royalty rate established through Dr. Lawrence Keating's Georgia-Pacific analysis, supported by five comparable license agreements with rates ranging from 6.5% to 10.2%. Consider arguing for an enhanced ongoing royalty (e.g., 12–15%) given the post-verdict, compulsory-license nature of the Transition Period arrangement. See Amado v. Kestrel Partners LLC, 517 F.3d 1353, 1362 (Fed. Cir. 2008) (ongoing royalty rate may exceed the reasonable royalty determined at trial).

3. Doctrine of Equivalents Claims. The colorable-imitation provision in Section II(e) should be reviewed with particular attention to Claims 3 and 7 of the '193 Patent and Claim 12 of the '015 Patent, which were asserted under the doctrine of equivalents. Consider whether additional or more specific language is warranted to capture products that infringe under DOE, particularly given the potential overlap with the Redesign Clearance Procedure. Omar Siddiqui to prepare analysis and circulate to team by end of week.

4. Sunset Provision Duration. The proposed 18-month Transition Period is consistent with Lumicore's own trial testimony (Dr. Dalmqvist testified that a full redesign would require 18–24 months). Lumicore may argue for 24 months; OWS may accept 18 months as a reasonable compromise. Prepare alternative language for 12-month and 24-month periods in case the Court asks for options or Lumicore proposes modifications. Wendy Schultz to draft alternative provisions.

5. Client and Investor Confirmation. Confirm with Rebecca Tanaka (OWS General Counsel) and Franklin Osei (Ridgeline Capital Partners, OWS's lead institutional investor) that the proposed injunction terms — particularly the 18-month Transition Period and the ongoing royalty mechanism — are consistent with OWS's strategic objectives and do not conflict with any pending business development or licensing initiatives. Alan Ngo to schedule call with client team.

6. Bond Analysis. If the Court signals that a bond may be required notwithstanding the post-trial posture, coordinate with Heritage National Surety Co. (contact: David Park, SVP) regarding availability and cost of an injunction bond. Current assessment is that bond is unlikely to be required given the full-trial posture, but preparation should be completed as a contingency.

7. Supplemental Briefing Materials. If the Court requests supplemental briefing on the Cascade Holdings factors, the following declarations are available for incorporation by reference: (a) Declaration of Karen Whitfield (OWS VP of Sales) regarding customer diversion and lost design-in opportunities; (b) Declarations of regional sales directors regarding competitive dynamics at specific customer accounts; (c) Supplemental expert declaration of Dr. Lawrence Keating regarding ongoing damages and market impact. Jim Callahan to confirm local practice requirements for any supplemental submissions.

REVIEW AND APPROVAL CHAIN

Document Version: v3.2 — Last revised: January 28, 2026 — W. Schultz

Role	Name	Status
Partner Review	Alan Ngo	Pending
Associate Drafter (Lead)	Wendy Schultz	Draft Complete
Associate Drafter (Support)	Omar Siddiqui	Sections II, VII under review
Local Counsel Review	Jim Callahan (Whitmore & Callahan LLP)	Pending
Client Approval	Rebecca Tanaka (OWS GC)	Required before filing

UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
OPTIWAVE SEMICONDUCTOR CORP.,
Plaintiff,
v.
LUMICORE TECHNOLOGIES, INC.,
Defendant.
Civil Action No. 2:24-cv-00319-JRG
[PROPOSED] ORDER GRANTING PERMANENT INJUNCTION
I. RECITALS
WHEREAS, Plaintiff Optiwave Semiconductor Corp. ("OWS"), a corporation organized and existing under the laws of the State of Delaware, with its principal place of business located at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054, filed its original Complaint in this action on April 22, 2024, asserting claims for patent infringement against Defendant Lumicore Technologies, Inc. ("Lumicore"), a corporation organized and existing under the laws of the State of Delaware, with its principal place of business located at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. OWS's Complaint, as subsequently amended, asserted infringement of four United States patents: U.S. Patent No. 10,234,847 (the "'847 Patent"), entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss"; U.S. Patent No. 10,891,193 (the "'193 Patent"), entitled "High-Bandwidth coherent Optical Transceiver Integrated on Silicon Substrate"; U.S. Patent No. 9,678,562 (the "'562 Patent"), entitled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks"; and U.S. Patent No. 11,402,015 (the "'015 Patent"), entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers" (collectively, the "Asserted Patents"); and
WHEREAS, this matter proceeded to jury trial beginning on February 2, 2026, before a jury duly empaneled and sworn, with trial concluding on February 20, 2026, and the jury thereafter returning a verdict in favor of OWS on all asserted claims of infringement and validity; and
WHEREAS, the jury found, based on a preponderance of the evidence presented at trial, that Lumicore has infringed one or more valid claims of each of the Asserted Patents through the manufacture, use, sale, offer for sale, and/or importation of the following accused products: (a) the LumiLink 400G-ZR+ transceiver module; (b) the LumiLink 800G-DR8 transceiver module; and (c) the LumiEdge 1600G-LR transceiver module (collectively, the "Enjoined Products"); and
WHEREAS, the jury further found, by clear and convincing evidence, that Lumicore's infringement of the Asserted Patents was willful, as reflected in the jury's answers to Verdict Form Questions Nos. 12 through 15; and
WHEREAS, the jury awarded compensatory damages to OWS in the amount of $__ for Lumicore's past infringement of the Asserted Patents; and
WHEREAS, OWS is the owner by assignment of the '847 Patent, which was filed on September 14, 2016, and issued on March 19, 2019, and which was originally assigned to Optiwave Semiconductor Corp.; and
WHEREAS, OWS is the owner by assignment of the '193 Patent, which was filed on April 7, 2017, and issued on January 12, 2021, and which was originally assigned to Optiwave Semiconductor Corp.; and
WHEREAS, OWS is the owner by assignment of the '562 Patent, which was filed on November 22, 2014, and issued on June 13, 2017, and which was originally assigned to Solara Optics, Inc., and was subsequently acquired by OWS pursuant to an Asset Purchase Agreement dated June 15, 2018, for a total consideration of $34.5 million, and all right, title, and interest in the '562 Patent were duly assigned and recorded with the United States Patent and Trademark Office; and
WHEREAS, OWS is the owner by assignment of the '015 Patent, which was filed on August 30, 2019, and issued on August 2, 2022, and which was originally assigned to Optiwave Semiconductor Corp.; and
WHEREAS, all maintenance fees for each of the Asserted Patents are current as of the date of entry of this Order, and each of the Asserted Patents remains valid and in force; and
WHEREAS, OWS has moved this Court for entry of a permanent injunction pursuant to 35 U.S.C. § 283, and the Court has considered OWS's motion, the parties' briefs and supporting evidence, the trial record, the jury verdict, and the arguments of counsel, and has evaluated each of the four factors set forth by the Supreme Court in Northgate Group v. MercExchange, L.L.C., 547 U.S. 388 (2006); and
WHEREAS, with respect to the first Cascade Holdings factor — irreparable harm — the Court finds that OWS has demonstrated, by a preponderance of the evidence, that it has suffered and will continue to suffer irreparable harm in the absence of a permanent injunction, based on the following findings:
(a) OWS is a practicing entity that directly competes with Lumicore in the silicon-photonics transceiver market for hyperscale data centers, cloud-service providers, and high-performance computing applications. OWS designs, manufactures, and sells transceiver modules that practice the Asserted Patents, including its OWS-400ZR, OWS-800XR, and OWS-1600DR product families;
(b) OWS is the third-largest United States supplier of silicon-photonics transceiver modules, with fiscal year 2023 total revenue of approximately $487.3 million, of which approximately $310 million — representing approximately 63.6% of total revenue — is directly attributable to products embodying the patented technology of the Asserted Patents;
(c) The trial evidence, including the testimony of OWS's Vice President of Sales, Karen Whitfield, and the expert testimony of Dr. Lawrence Keating, demonstrated that average selling prices for 400G-ZR transceiver modules declined by approximately 18.7% from the third quarter of 2022 through the fourth quarter of 2023, and that this price erosion was attributable in significant part to Lumicore's entry into the market with the infringing LumiLink 400G-ZR+ product at aggressive price points made possible by Lumicore's avoidance of the research and development costs and licensing obligations that OWS and its legitimate licensees bear;
(d) The trial evidence further demonstrated customer diversion and loss of design-in opportunities at major hyperscale data-center operators where OWS and Lumicore compete head-to-head. Evidence showed that at least seven major hyperscale customers either switched from OWS products to Lumicore's infringing products or split their procurement between OWS and Lumicore during the period of infringement, and that Lumicore secured design-in wins at twelve of the top twenty hyperscale data-center operators globally, in direct competition with OWS;
(e) OWS holds a substantial intellectual property portfolio consisting of 142 issued United States patents and 58 pending patent applications, and this patent portfolio is central to OWS's competitive position in the silicon-photonics transceiver market. Continued infringement by Lumicore undermines the value of this portfolio and erodes OWS's ability to license its technology to willing licensees on commercially reasonable terms, as other market participants may perceive that OWS is unable or unwilling to enforce its intellectual property rights;
(f) Monetary damages alone cannot fully compensate OWS for the ongoing loss of market share, the continuing erosion of average selling prices, the loss of design-in opportunities that determine product selection for multi-year deployment cycles, and the cumulative erosion of OWS's competitive position in a rapidly evolving market;
and
WHEREAS, with respect to the second Cascade Holdings factor — inadequacy of legal remedies — the Court finds that monetary damages are inadequate to compensate OWS fully for Lumicore's continued infringement, based on the following findings:
(a) Lumicore's ongoing sales of infringing products cause continuing and difficult-to-quantify harms, including disruption of customer relationships developed over years of collaborative design engagement, reputational harm arising from the erosion of OWS's perceived technological differentiation, and further price erosion across an entire product category;
(b) The calculation of future lost profits and other forward-looking damages with reasonable precision is rendered impracticable by the rapid evolution of market conditions in the silicon-photonics transceiver industry, including the anticipated transition to next-generation 1.6T and 3.2T standards, the entry and exit of competitors, and the dynamic nature of procurement decisions by hyperscale data-center operators;
(c) OWS's patented innovations represent core differentiating technology in the design and manufacture of silicon-photonics transceiver modules, and monetary compensation, while appropriate for past harm, does not restore OWS's exclusive right to practice its own inventions or fully remedy the ongoing competitive injury caused by the sale of infringing products;
and
WHEREAS, with respect to the third Cascade Holdings factor — balance of hardships — the Court finds that the balance of hardships tips in favor of OWS, based on the following findings:
(a) OWS has been harmed by Lumicore's infringement since at least the third quarter of 2022, when Lumicore launched the LumiLink 400G-ZR+ transceiver module, and has continued to suffer harm as Lumicore expanded its infringing product line with the LumiLink 800G-DR8 and the LumiEdge 1600G-LR;
(b) While Lumicore estimates that approximately 42% of its total product revenue — based on fiscal year 2023 total revenue of approximately $312.6 million — is attributable to the Enjoined Products and would be at risk from an injunction, and that a complete redesign to non-infringing alternatives would require approximately 18 to 24 months, this hardship is substantially mitigated by the Transition Period provided in Section IV of this Order, which affords Lumicore eighteen (18) months to fulfill existing contractual commitments and to design around the Asserted Patents;
(c) Lumicore was on actual notice of OWS's patent rights since at least January 15, 2023, when FairPoint Licensing Group, LLC, acting on behalf of OWS, sent a detailed licensing letter to Lumicore's General Counsel, Raymond Bautista, identifying the '847 Patent, the '193 Patent, and the '562 Patent, and offering to engage in licensing discussions. Lumicore acknowledged receipt of this letter but declined to negotiate a license and instead chose to continue and expand its infringing activities. Following issuance of the '015 Patent, FairPoint Licensing Group, LLC sent a supplemental notice letter on May 15, 2023, identifying the '015 Patent, yet Lumicore nevertheless proceeded to launch the LumiEdge 1600G-LR transceiver module in the fourth quarter of 2023 with full knowledge of OWS's patent portfolio;
(d) The jury's finding that Lumicore's infringement was willful further weighs against Lumicore in the balance-of-hardships analysis. A party that infringes patent rights willfully and in the face of actual notice is not well positioned to claim undue hardship from the enforcement of those same patent rights. See i4i Ltd. P'ship v. Kestrel Partners LLC, 598 F.3d 831, 862 (Fed. Cir. 2010), aff'd, 564 U.S. 91 (2011);
(e) The Transition Period set forth in Section IV below provides Lumicore with a reasonable period of eighteen (18) months to wind down sales of Enjoined Products, to satisfy pre-existing contractual commitments, and to develop and bring to market redesigned products that do not infringe the Asserted Patents, thereby substantially reducing any hardship that might otherwise flow from the entry of an immediate and absolute injunction;
and
WHEREAS, with respect to the fourth Cascade Holdings factor — public interest — the Court finds that the public interest favors the entry of a permanent injunction, based on the following findings:
(a) The public has a strong interest in the enforcement of valid patent rights, which provides the incentive for the investment in research and development that drives innovation. The patent system is designed to encourage innovation by granting inventors the exclusive right to practice their inventions for a limited time, and the enforcement of that exclusivity serves the public interest;
(b) There is no evidence in the trial record that the Enjoined Products serve a critical public health, safety, or essential-infrastructure need that cannot be met by non-infringing alternatives available from OWS itself or from other suppliers in the silicon-photonics transceiver market. The hyperscale data-center transceiver market includes multiple suppliers, and OWS's own competing products are available to meet customer demand;
(c) The public interest is served by encouraging market participants to respect intellectual property rights and to negotiate licenses in good faith, rather than to infringe with impunity and force patent holders to engage in protracted and expensive litigation to vindicate their rights. Denial of injunctive relief in the face of willful infringement would send a signal to the market that the cost of infringement is merely a backward-looking royalty, which would undermine the incentives that the patent system is designed to provide;
NOW, THEREFORE, having considered the foregoing, the parties' submissions, the trial record, and the applicable law, and good cause appearing, the Court hereby ORDERS as follows:
II. INJUNCTIVE PROVISIONS — CORE PROHIBITIONS
1. IT IS HEREBY ORDERED that Defendant Lumicore Technologies, Inc., its officers (including, but not limited to, Chief Executive Officer Thomas Kessler, Chief Technology Officer Dr. Sandra Michaud, General Counsel Raymond Bautista, Vice President of Product Development Dr. Eric Dalmqvist, and Chief Financial Officer Janet Moreno), directors, agents, servants, employees, representatives, affiliates, subsidiaries, successors, and assigns, and all persons in active concert or participation with any of the foregoing who receive actual notice of this Order, are hereby permanently ENJOINED and RESTRAINED from engaging in any of the following activities:
(a) Making. Manufacturing, fabricating, assembling, or having manufactured, fabricated, or assembled (including through contract manufacturers, foundries, packaging houses, or other third parties), anywhere in the world for importation into or sale within the United States, any of the following products (collectively, the "Enjoined Products"):
(i) LumiLink 400G-ZR+ transceiver modules (including all variants, configurations, and sub-models thereof);
(ii) LumiLink 800G-DR8 transceiver modules (including all variants, configurations, and sub-models thereof); and
(iii) LumiEdge 1600G-LR transceiver modules (including all variants, configurations, and sub-models thereof).
(b) Using. Using, testing, demonstrating, deploying, or otherwise practicing any of the Enjoined Products within the United States, including for purposes of product evaluation, benchmarking, customer demonstrations, trade-show exhibitions, or internal deployment.
(c) Selling. Selling or offering to sell, directly or indirectly, any of the Enjoined Products within the United States, including through any distributor, reseller, channel partner, or online marketplace.
(d) Importing. Importing or causing to be imported into the United States any of the Enjoined Products, whether in finished form, partially assembled form, or as components intended for assembly into Enjoined Products within the United States.
(e) Colorable Imitations. Making, using, selling, offering to sell, or importing into the United States any product, device, module, or system that is a colorable imitation of any of the Enjoined Products, or that is not more than colorably different from any of the Enjoined Products, and that infringes any claim of U.S. Patent No. 10,234,847, U.S. Patent No. 10,891,193, U.S. Patent No. 9,678,562, or U.S. Patent No. 11,402,015. For the avoidance of doubt, redesigned products that do not infringe any valid claim of the Asserted Patents are not subject to this Order. Lumicore may seek a determination from this Court, pursuant to the Redesign Clearance Procedure set forth in Section VII below, that any redesigned product falls outside the scope of this Order before commercializing such product.
III. ENJOINED PRODUCTS — DEFINITION
2. As used in this Order, the term "Enjoined Products" means the LumiLink 400G-ZR+ transceiver module, the LumiLink 800G-DR8 transceiver module, and the LumiEdge 1600G-LR transceiver module, as manufactured and sold by Lumicore during the period of infringement, including all variants, configurations, sub-models, and successor versions thereof that incorporate the same infringing features and functionalities identified at trial and found by the jury to infringe the Asserted Patents.
IV. SUNSET PROVISION — TRANSITION PERIOD FOR EXISTING COMMITMENTS
3. Eighteen-Month Transition Period. Notwithstanding the prohibitions set forth in Section II above, Lumicore shall have a period of eighteen (18) months from the date of entry of this Order (the "Transition Period") during which Lumicore may continue to fulfill existing binding contractual obligations for the delivery of Enjoined Products, provided that such contractual obligations were entered into prior to the date of entry of this Order and are documented in writing. During the Transition Period, Lumicore may continue to manufacture (or have manufactured) and deliver Enjoined Products solely to the extent necessary to fulfill such pre-existing contracts, subject to the conditions set forth in this Section IV.
4. Conditions of the Transition Period. The Transition Period is subject to each and all of the following conditions:
(a) Certified Contract List. Within thirty (30) calendar days of the date of entry of this Order, Lumicore shall provide to OWS's counsel of record, Calderwood & Harkness LLP, Attention: Alan Ngo, 350 South Grand Avenue, 48th Floor, Los Angeles, California 90071, a complete and certified list of all existing contracts requiring delivery of Enjoined Products (the "Certified Contract List"). The Certified Contract List shall include, for each such contract: (i) the identity of the customer; (ii) the specific Enjoined Product(s) covered by the contract; (iii) the quantity and aggregate dollar value of remaining deliverables under the contract as of the date of entry of this Order; (iv) the scheduled delivery dates for all remaining deliverables; and (v) a true and correct copy of each such contract, including all amendments, purchase orders, and statements of work. The Certified Contract List and all accompanying contract documents shall be treated as "Highly Confidential — Attorneys' Eyes Only" under the Stipulated Protective Order entered in this action (Dkt. No. 47), if Lumicore so designates.
(b) No New Contracts. Lumicore shall not enter into any new contracts, extend any existing contracts, amend any existing contracts to increase quantities or extend delivery schedules, or accept any new purchase orders for Enjoined Products after the date of entry of this Order. Any attempt by Lumicore to enter into, extend, or amend any contract in contravention of this provision shall be void and of no effect, and shall constitute a violation of this Order.
(c) Ongoing Royalty. Lumicore shall pay to OWS a running royalty of _% on all net sales of Enjoined Products made during the Transition Period. For purposes of this provision, "net sales" shall mean gross revenue received by Lumicore from the sale of Enjoined Products, less returns, allowances, and shipping charges actually credited to customers. Royalty payments shall be made quarterly, within thirty (30) calendar days following the end of each calendar quarter (i.e., March 31, June 30, September 30, and December 31), and each payment shall be accompanied by a detailed accounting statement setting forth the number of units of each Enjoined Product sold during the preceding quarter, the gross revenue and net sales for each Enjoined Product, the royalty calculation, and the identity of each customer to whom Enjoined Products were sold. OWS proposes that the Court set the ongoing royalty rate at no less than 8.5%, which is the reasonable royalty rate established at trial through the testimony of OWS's damages expert, Dr. Lawrence Keating, based on a Georgia-Pacific analysis supported by five comparable licenses with royalty rates ranging from 6.5% to 10.2%.
(d) Absolute Termination. At the conclusion of the Transition Period — that is, eighteen (18) months from the date of entry of this Order — all rights to make, use, sell, offer to sell, or import Enjoined Products shall terminate absolutely and without exception, and the full scope of the injunction set forth in Section II shall apply in its entirety. No further sales of Enjoined Products shall be permitted after expiration of the Transition Period, regardless of whether any pre-existing contractual obligations remain unfulfilled.
5. No Extension of the Transition Period. The Transition Period shall not be extended absent a showing of extraordinary circumstances demonstrated by clear and convincing evidence and with the written consent of OWS, or by further order of this Court upon a noticed motion filed by Lumicore with at least thirty (30) days' advance notice to OWS. The mere existence of unfulfilled contractual obligations at the expiration of the Transition Period shall not, standing alone, constitute extraordinary circumstances warranting an extension.
V. REPORTING AND COMPLIANCE OBLIGATIONS
6. Designation of Compliance Officer. Within fourteen (14) calendar days of the date of entry of this Order, Lumicore shall designate a senior officer at the level of Vice President or above (the "Compliance Officer") who shall be personally responsible for ensuring Lumicore's compliance with all provisions of this Order. Lumicore shall provide written notice of such designation to OWS's counsel of record, identifying the Compliance Officer by name, title, and business contact information. If the Compliance Officer changes at any time during the term of this Order, Lumicore shall provide written notice of the new designation within seven (7) calendar days of the change.
7. Quarterly Compliance Reports. Beginning ninety (90) calendar days after the date of entry of this Order, and continuing on a quarterly basis thereafter for a period of three (3) years from the date of entry of this Order, Lumicore shall provide to OWS's counsel of record a written compliance report (each, a "Quarterly Compliance Report"). Each Quarterly Compliance Report shall be signed under penalty of perjury by the Compliance Officer and shall certify to the following:
(a) That during the preceding calendar quarter, Lumicore has not manufactured, used, sold, offered to sell, or imported any Enjoined Products or colorable imitations thereof outside the scope permitted by the Transition Period provisions of Section IV of this Order;
(b) A detailed accounting of any sales of Enjoined Products made during the preceding calendar quarter pursuant to the Transition Period, including the number of units sold, the gross revenue and net sales attributable to such sales, the identity of each customer, and the amount of royalty payments made or due to OWS in connection with such sales;
(c) A description of any redesigned or successor products introduced or commercialized by Lumicore during the preceding calendar quarter in the silicon-photonics transceiver product category, together with a statement regarding whether Lumicore contends that such products are non-infringing, without waiving any applicable attorney-client privilege, work-product protection, or other privilege;
(d) A certification that Lumicore has not entered into any new contracts, extended any existing contracts, or accepted any new purchase orders for Enjoined Products in violation of Section IV(b) of this Order.
All Quarterly Compliance Reports and accompanying documentation shall be designated and treated as "Highly Confidential — Attorneys' Eyes Only" under the Stipulated Protective Order entered in this action (Dkt. No. 47).
8. Right of Inspection. OWS shall have the right, upon not less than thirty (30) calendar days' written notice to Lumicore, to retain an independent third-party auditor (the "Auditor"), reasonably acceptable to Lumicore (such acceptance not to be unreasonably withheld, conditioned, or delayed), to conduct an audit of Lumicore's compliance with this Order. The Auditor shall be entitled to inspect and copy relevant books, records, financial statements, sales data, manufacturing records, inventory records, shipping records, and other documents and materials reasonably related to compliance with this Order, and to inspect relevant facilities, during normal business hours and upon reasonable advance coordination with Lumicore's Compliance Officer. The costs of such audit shall be borne by OWS; provided, however, that if the audit reveals a material violation of this Order, all costs of the audit, including the Auditor's fees and expenses, shall be borne by Lumicore. All information obtained through any such audit shall be subject to the confidentiality provisions of the Stipulated Protective Order entered in this action, and the Auditor shall execute the acknowledgment required by that Protective Order before commencing any inspection. OWS shall not exercise its right of inspection more than once in any twelve-month period absent a showing of good cause.
VI. ENFORCEMENT PROVISIONS
9. Contempt. Any violation of this Order may be punished as contempt of Court pursuant to the inherent powers of this Court and applicable provisions of federal law. In any contempt proceeding arising from an alleged violation of this Order, the prevailing party shall be entitled to recover its reasonable attorneys' fees and costs incurred in connection with such proceeding.
10. Supplemental Damages. Nothing in this Order shall preclude OWS from seeking additional damages, including supplemental damages pursuant to 35 U.S.C. § 284 and/or enhanced damages for willful infringement, for any infringement by Lumicore occurring after the date of the jury's verdict or after the date of entry of this Order. The Court's entry of this permanent injunction is without prejudice to OWS's right to pursue any and all remedies available at law or in equity for post-injunction infringement.
11. No Bond Required. The Court finds that no bond is required to be posted by OWS in connection with this permanent injunction. In reaching this determination, the Court has considered the following: (a) the jury has already adjudicated Lumicore's infringement and the validity of the Asserted Patents following a full trial on the merits; (b) the Transition Period provided in Section IV substantially mitigates any potential harm to Lumicore arising from the entry of this Order; and (c) this injunction is permanent in nature, entered following a final adjudication on the merits, and is distinguishable from a preliminary injunction where the risk of an erroneous deprivation is greater. The Court has considered the provisions of Federal Rule of Civil Procedure 65(c) and finds that the Rule's security requirement is not mandatory in the context of a permanent injunction entered following a full trial, and that the equities of this case do not warrant the imposition of a bond requirement. See Westvale Holdings. v. Emulex Corp., 732 F.3d 1325, 1339 (Fed. Cir. 2013) (noting district court's discretion regarding bond in permanent injunction context).
VII. REDESIGN CLEARANCE PROCEDURE
12. Voluntary Clearance Process. If, at any time after the entry of this Order, Lumicore develops a redesigned product that it contends does not infringe any valid claim of the Asserted Patents, Lumicore may seek a determination from this Court that the redesigned product is not subject to the prohibitions of this Order. To initiate such a determination, the following procedure shall apply:
(a) Lumicore shall serve upon OWS's counsel of record a detailed written description of the redesigned product (the "Redesign Submission"), including: (i) complete technical specifications; (ii) schematics, block diagrams, and design documentation sufficient to enable a person of ordinary skill in the art to understand the structure and operation of the redesigned product; and (iii) a claim-by-claim non-infringement analysis for each asserted claim of each of the Asserted Patents, setting forth in detail the basis for Lumicore's contention that the redesigned product does not infringe, whether literally or under the doctrine of equivalents. The Redesign Submission shall be served at least sixty (60) calendar days before any planned commercialization of the redesigned product.
(b) OWS shall have thirty (30) calendar days from receipt of the Redesign Submission to serve a written response, either: (i) consenting that the redesigned product falls outside the scope of this Order and is not an infringing colorable imitation of any Enjoined Product; or (ii) objecting to Lumicore's characterization and setting forth the bases for OWS's contention that the redesigned product falls within the scope of this Order.
(c) If OWS consents, the parties shall file a joint stipulation with this Court confirming that the redesigned product is not subject to this Order, and Lumicore may proceed to commercialize the redesigned product upon entry of an order approving such stipulation.
(d) If OWS objects, either party may file a motion with this Court for a determination regarding whether the redesigned product is subject to this Order. Such motion shall be resolved on an expedited basis. Lumicore shall not commercialize the redesigned product in the United States until the Court has ruled on the motion, unless Lumicore obtains a written stipulation from OWS or an order from this Court permitting interim sales pending resolution of the motion.
All materials exchanged or filed in connection with the Redesign Clearance Procedure shall be subject to the Stipulated Protective Order entered in this action.
VIII. SCOPE AND CONSTRUCTION
13. Patents Covered. This Order applies to the following United States patents:
(a) U.S. Patent No. 10,234,847, entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss," filed September 14, 2016, and issued March 19, 2019;
(b) U.S. Patent No. 10,891,193, entitled "High-Bandwidth coherent Optical Transceiver Integrated on Silicon Substrate," filed April 7, 2017, and issued January 12, 2021;
(c) U.S. Patent No. 9,678,562, entitled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks," filed November 22, 2014, and issued June 13, 2017; and
(d) U.S. Patent No. 11,402,015, entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," filed August 30, 2019, and issued August 2, 2022.
This Order shall remain in effect for the remaining life of each of the Asserted Patents, including any extensions thereof, unless earlier modified or dissolved by further order of this Court.
14. Relationship to Damages Award. This permanent injunction is in addition to, and not in lieu of, the compensatory damages awarded by the jury and any enhanced damages that may be awarded by the Court pursuant to 35 U.S.C. § 284. The ongoing royalty payable during the Transition Period, as set forth in Section IV(c) of this Order, is separate from and supplemental to the jury's damages award and compensates OWS for the continued use of its patented technology during the wind-down period.
15. Successors and Assigns. This Order shall be binding upon Lumicore Technologies, Inc. and upon any successor entity, whether by merger, acquisition, consolidation, reorganization, or otherwise, and upon any assignee of all or substantially all of Lumicore's assets related to the Enjoined Products. In the event of any change of ownership, merger, acquisition, or reorganization involving Lumicore or its assets related to the Enjoined Products, Lumicore (or its successor) shall provide written notice to OWS's counsel of record within fourteen (14) calendar days of the consummation of any such transaction, and shall take all steps necessary to ensure that the successor or assignee is bound by the terms of this Order.
16. Modification. This Order may be modified only upon motion by either party demonstrating changed circumstances warranting modification, filed with notice and an opportunity to be heard. The party seeking modification shall bear the burden of demonstrating that the requested modification is warranted.
IX. RETENTION OF JURISDICTION
17. This Court retains continuing and exclusive jurisdiction over this action and over the parties for the purpose of enforcing, modifying, or interpreting this Order, and for adjudicating any and all disputes arising from or related to compliance with this Order, including but not limited to contempt proceedings, motions for modification, disputes under the Redesign Clearance Procedure, and any claims for supplemental or enhanced damages for post-injunction infringement.
X. SERVICE
18. OWS shall serve a true and correct copy of this Order, within five (5) business days of entry, upon each of the following:
(a) Lumicore's lead trial counsel: Catherine "Kate" Rourke, Hawthorne Vega & Cruz LLP, 600 Congress Avenue, Suite 2400, Austin, Texas 78701;
(b) Lumicore's local counsel: Maria Garza, Trask Eddington LLP, 425 East Front Street, Suite 300, Tyler, Texas 75701;
(c) Lumicore's General Counsel: Raymond Bautista, Lumicore Technologies, Inc., 9200 Spectrum Boulevard, Building C, Austin, Texas 78759.
Service upon Lumicore's registered agent, National Agent Services Corp., 850 New Burton Road, Suite 201, Dover, Delaware 19904, is not required but may be effected at OWS's discretion as a matter of courtesy.
XI. EFFECTIVE DATE
19. This Order shall take effect immediately upon entry by the Clerk of Court for the Eastern District of Texas.
IT IS SO ORDERED.
SIGNED this _ day of ___, 2026.
________________________________________
THE HONORABLE JAMES R. GILSTRAP UNITED STATES DISTRICT JUDGE EASTERN DISTRICT OF TEXAS
SUBMITTED BY COUNSEL FOR PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.
CALDERWOOD & HARKNESS LLP
By: ________
Alan Ngo (CA Bar No. 247891; admitted pro hac vice) 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-7200 Facsimile: (213) 555-7201
Email: ango@calderwoodharkness.com
Marcus Delgado (TX Bar No. 24098317) 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-7200 Facsimile: (213) 555-7201
Email: mdelgado@calderwoodharkness.com
WHITMORE & CALLAHAN LLP
By: ________
James "Jim" Callahan (TX Bar No. 03871245) 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 555-4400 Facsimile: (903) 555-4401
Email: jcallahan@whitmorecallahan.com
Local Counsel for Plaintiff Optiwave Semiconductor Corp.
CERTIFICATE OF SERVICE
I hereby certify that on ____, 2026, a true and correct copy of the foregoing [Proposed] Order Granting Permanent Injunction was served upon all counsel of record via the Court's CM/ECF electronic filing system, which will send notification of such filing to all registered participants.
________________________________________
Alan Ngo
INTERNAL DRAFTING NOTES — CALDERWOOD & HARKNESS LLP WORK PRODUCT — NOT FOR FILING PRIVILEGED AND CONFIDENTIAL — ATTORNEY-CLIENT PRIVILEGE / WORK PRODUCT DOCTRINE
OPEN ITEMS AND ACTION ITEMS
1. Verdict-Dependent Placeholders. The following placeholders must be completed upon receipt of the jury's verdict and prior to filing:
(a) Damages amount (Recital paragraph referencing jury award);
(b) Specific claim findings — whether to reference specific infringed claims in the operative injunction language. Asserted claims at trial: Claims 1, 3, 5, 9, and 14 of the '847 Patent; Claims 1, 3, 7, 10, 15, and 18 of the '193 Patent; Claims 1, 4, 6, and 11 of the '562 Patent; Claims 1, 5, 8, 12, and 16 of the '015 Patent. Current draft refers generically to "valid and infringed claims as determined by the jury." Decision needed on whether specific claim enumeration strengthens or narrows the injunction — discuss with Alan Ngo.
2. Ongoing Royalty Rate. The ongoing royalty rate for the Transition Period is left blank for briefing post-verdict. OWS's position: at or above 8.5%, which is the reasonable royalty rate established through Dr. Lawrence Keating's Georgia-Pacific analysis, supported by five comparable license agreements with rates ranging from 6.5% to 10.2%. Consider arguing for an enhanced ongoing royalty (e.g., 12–15%) given the post-verdict, compulsory-license nature of the Transition Period arrangement. See Amado v. Kestrel Partners LLC, 517 F.3d 1353, 1362 (Fed. Cir. 2008) (ongoing royalty rate may exceed the reasonable royalty determined at trial).
3. Doctrine of Equivalents Claims. The colorable-imitation provision in Section II(e) should be reviewed with particular attention to Claims 3 and 7 of the '193 Patent and Claim 12 of the '015 Patent, which were asserted under the doctrine of equivalents. Consider whether additional or more specific language is warranted to capture products that infringe under DOE, particularly given the potential overlap with the Redesign Clearance Procedure. Omar Siddiqui to prepare analysis and circulate to team by end of week.
4. Sunset Provision Duration. The proposed 18-month Transition Period is consistent with Lumicore's own trial testimony (Dr. Dalmqvist testified that a full redesign would require 18–24 months). Lumicore may argue for 24 months; OWS may accept 18 months as a reasonable compromise. Prepare alternative language for 12-month and 24-month periods in case the Court asks for options or Lumicore proposes modifications. Wendy Schultz to draft alternative provisions.
5. Client and Investor Confirmation. Confirm with Rebecca Tanaka (OWS General Counsel) and Franklin Osei (Ridgeline Capital Partners, OWS's lead institutional investor) that the proposed injunction terms — particularly the 18-month Transition Period and the ongoing royalty mechanism — are consistent with OWS's strategic objectives and do not conflict with any pending business development or licensing initiatives. Alan Ngo to schedule call with client team.
6. Bond Analysis. If the Court signals that a bond may be required notwithstanding the post-trial posture, coordinate with Heritage National Surety Co. (contact: David Park, SVP) regarding availability and cost of an injunction bond. Current assessment is that bond is unlikely to be required given the full-trial posture, but preparation should be completed as a contingency.
7. Supplemental Briefing Materials. If the Court requests supplemental briefing on the Cascade Holdings factors, the following declarations are available for incorporation by reference: (a) Declaration of Karen Whitfield (OWS VP of Sales) regarding customer diversion and lost design-in opportunities; (b) Declarations of regional sales directors regarding competitive dynamics at specific customer accounts; (c) Supplemental expert declaration of Dr. Lawrence Keating regarding ongoing damages and market impact. Jim Callahan to confirm local practice requirements for any supplemental submissions.
REVIEW AND APPROVAL CHAIN
Document Version: v3.2 — Last revised: January 28, 2026 — W. Schultz
Role | Name | Status
Partner Review | Alan Ngo | Pending
Associate Drafter (Lead) | Wendy Schultz | Draft Complete
Associate Drafter (Support) | Omar Siddiqui | Sections II, VII under review
Local Counsel Review | Jim Callahan (Whitmore & Callahan LLP) | Pending
Client Approval | Rebecca Tanaka (OWS GC) | Required before filing