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

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DRAFT — CONTINGENCY — ON HOLD PER CLIENT INSTRUCTION Prepared by Calderwood & Harkness LLP Responsible Partner: Alan Ngo

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

Hon. James R. Gilstrap

PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S EMERGENCY MOTION FOR TEMPORARY RESTRAINING ORDER AND PRELIMINARY INJUNCTION

Alan Ngo (CA Bar No. __; *admitted pro hac vice* E.D. Tex.) Marcus Delgado (TX Bar No. _) Wendy Schultz (CA Bar No. _; *admitted pro hac vice* E.D. Tex.) Omar Siddiqui (CA Bar No. __; admitted pro hac vice E.D. Tex.) CALDERWOOD & HARKNESS LLP 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-1800 Facsimile: (213) 555-1801

1201 F Street NW, Suite 700 Washington, DC 20004 Telephone: (202) 555-2400 Facsimile: (202) 555-2401

James "Jim" Callahan (TX Bar No. __) WHITMORE & CALLAHAN LLP 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 555-4100 Facsimile: (903) 555-4101

Attorneys for Plaintiff Optiwave Semiconductor Corp.

NOTICE OF MOTION

TO THE COURT AND ALL PARTIES AND THEIR ATTORNEYS OF RECORD:

PLEASE TAKE NOTICE that Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") hereby moves this Court, pursuant to Federal Rule of Civil Procedure 65(a) and (b), for entry of a temporary restraining order and preliminary injunction against Defendant Lumicore Technologies, Inc. ("Lumicore" or "Defendant"). Plaintiff respectfully requests that this motion be heard on an expedited basis due to the imminent and irreparable harm OWS faces as a result of Defendant's continued and expanding patent infringement.

By this motion, OWS requests that the Court temporarily and preliminarily enjoin Lumicore Technologies, Inc., its officers, agents, servants, employees, attorneys, and all persons in active concert or participation with Lumicore, from:

(a) Making, using, selling, offering to sell, or importing into the United States the LumiLink 400G-ZR+, LumiLink 800G-DR8, LumiEdge 1600G-LR transceiver modules, and the [New Accused Product], and any other products incorporating the same infringing technology;

(b) Marketing, advertising, or soliciting orders for any of the foregoing products; and

(c) Making, using, selling, offering to sell, or importing into the United States any colorable imitations of the foregoing products.

This motion is directed to the infringement of four United States patents owned by OWS: U.S. Patent No. 10,234,847 ("the '847 Patent"), U.S. Patent No. 10,891,193 ("the '193 Patent"), U.S. Patent No. 9,678,562 ("the '562 Patent"), and U.S. Patent No. 11,402,015 ("the '015 Patent") (collectively, the "Asserted Patents").

This motion is supported by the accompanying Memorandum of Points and Authorities in Support of Plaintiff's Emergency Motion for Temporary Restraining Order and Preliminary Injunction, the Declarations of Dr. Jian-Wei Huang, Rebecca Tanaka, Kevin Ng, Dr. Caroline Ashford, Karen Whitfield, Gregory Falk, Angela Reeves, and Alan Ngo, together with the Exhibits attached thereto, and such further evidence and argument as may be presented at the hearing on this motion.

MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S EMERGENCY MOTION FOR TEMPORARY RESTRAINING ORDER AND PRELIMINARY INJUNCTION

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I. INTRODUCTION

This case involves the deliberate, willful, and expanding infringement of four United States patents by Defendant Lumicore Technologies, Inc. in the fast-moving and fiercely competitive market for silicon-photonics transceiver modules used in hyperscale data centers. Plaintiff Optiwave Semiconductor Corp. — the innovator and patent holder — now comes before this Court seeking emergency relief to halt Lumicore's continued and accelerating infringement, which threatens to cause OWS irreparable competitive harm that cannot be remedied by monetary damages alone.

Optiwave Semiconductor Corp. is a Delaware corporation headquartered at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054. OWS is a fabless semiconductor company specializing in the design and commercialization of silicon photonics chipsets for data-center interconnects — the critical optical networking components that enable the massive data flows upon which modern cloud computing, artificial intelligence, and enterprise infrastructure depend. OWS is the third-largest U.S. supplier of silicon-photonics transceiver modules for hyperscale data centers, and its innovations are protected by an extensive intellectual property portfolio comprising 142 issued United States patents and 58 pending patent applications. In fiscal year 2023, OWS generated revenue of $487.3 million and employed approximately 1,250 people across its operations in Santa Clara, California; Austin, Texas; and Portland, Oregon. OWS's key product families — the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module lines — represent the direct commercial embodiment of the patented technologies at issue in this action.

Lumicore Technologies, Inc. is a Delaware corporation headquartered at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. Lumicore is a fast-growing competitor in the silicon-photonics transceiver market, targeting hyperscale and telecom customers. In fiscal year 2023, Lumicore reported revenue of approximately $312.6 million. Lumicore completed its initial public offering on the Nasdaq exchange in March 2022 at $24.00 per share, and its shares trade at approximately $37.00 per share as of the date of this filing, giving the company a market capitalization of approximately $3.4 billion based on 91.8 million shares outstanding.

The heart of this dispute centers on Lumicore's accused product lines — the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR transceiver modules — which collectively generated approximately $264.9 million in revenue in fiscal year 2023 alone. These products are projected to generate approximately $714.6 million through the currently scheduled trial date of February 2, 2026. Each of these products incorporates silicon-photonics technology that infringes one or more of OWS's Asserted Patents, as confirmed by independent physical teardown analysis, expert review, and, remarkably, admissions by Lumicore's own Chief Technology Officer.

OWS commenced this action on April 22, 2024, asserting seven counts: four counts of direct patent infringement, one count of induced infringement, one count of contributory infringement, and one count of willful infringement seeking enhanced damages under 35 U.S.C. § 284. The evidence of willfulness is compelling: OWS provided Lumicore with detailed written notice of infringement beginning on January 15, 2023, through its licensing agent FairPoint Licensing Group, LLC. Despite this notice, Lumicore refused to take a license, refused to commission a design-around analysis, and proceeded to launch yet another infringing product — the LumiEdge 1600G-LR — in the fourth quarter of 2023.

Now, Lumicore has taken yet another step to expand its infringing activities. [Placeholder — description of the triggering event: Lumicore's announcement of a new product incorporating the same infringing technology, or a major customer win that would expand the scope of infringement and irreparable harm to OWS.] This triggering event compels OWS to seek emergency injunctive relief. Each day that Lumicore continues to sell, market, and expand its infringing product lines, OWS suffers irreparable competitive harm — loss of design-in opportunities that cannot be recaptured, erosion of prices that cannot be restored, diversion of customers who cannot be recovered, and damage to market position and goodwill that cannot be measured or compensated by a monetary award at the conclusion of trial. The trial in this matter is not scheduled to commence until February 2, 2026 — more than [number] months from now — and the harm to OWS will be profound and permanent unless this Court intervenes.

OWS respectfully submits that each of the four factors governing the issuance of a temporary restraining order and preliminary injunction is satisfied, and that emergency relief is warranted.

II. STATEMENT OF FACTS

A. The Asserted Patents

OWS is the owner by assignment of each of the four Asserted Patents. Each patent is directed to innovations in silicon-photonics technology that are critical to the design and performance of modern transceiver modules for data-center interconnects. All four patents are utility patents, all maintenance fees are current, and no inter partes review ("IPR") petitions have been filed as to any of them as of the date of this motion. The patents were prosecuted by Cascade IP Advisors, LLC, located at 1550 Crystal Drive, Suite 600, Arlington, Virginia 22202, with Dr. Martin Chu serving as lead prosecution attorney.

U.S. Patent No. 10,234,847 ("the '847 Patent"). Entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss," the '847 Patent was filed on September 14, 2016 and issued on March 19, 2019. The '847 Patent was originally assigned to OWS and remains owned by OWS. The '847 Patent claims a novel multi-channel silicon photonic waveguide multiplexer architecture that achieves significantly lower insertion loss than prior-art designs, thereby enabling higher-performance optical signal routing within photonic integrated circuits used in transceiver modules. The low-insertion-loss characteristics claimed in the '847 Patent represent a critical breakthrough that allowed OWS and the industry to achieve the data rates and channel densities demanded by hyperscale data-center operators. The '847 Patent is in the same patent family as the '562 Patent, sharing a continuation relationship.

U.S. Patent No. 10,891,193 ("the '193 Patent"). Entitled "High-Bandwidth coherent Optical Transceiver Integrated on Silicon Substrate," the '193 Patent was filed on April 7, 2017 and issued on January 12, 2021. The '193 Patent was originally assigned to OWS and remains owned by OWS. It claims priority to Provisional Application No. 62/499,117, filed April 7, 2017. The '193 Patent claims a high-bandwidth coherent optical transceiver design integrated on a silicon substrate, representing an advance in the integration of optical and electronic components on a single chip platform. The coherent transceiver architecture claimed in the '193 Patent enables the transmission and reception of optical signals at data rates of 400 gigabits per second and above while maintaining signal integrity over extended distances — a capability that is essential for the backbone interconnects used in hyperscale data centers. The '193 Patent shares Provisional Application No. 62/499,117 with the '015 Patent.

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," the '562 Patent was filed on November 22, 2014 and issued on June 13, 2017. The '562 Patent was originally assigned to Solara Optics, Inc. OWS acquired the '562 Patent, along with eleven other patents, pursuant to an Asset Purchase Agreement dated June 15, 2018 between OWS and Solara Optics, Inc. The aggregate purchase price for the twelve-patent portfolio was $34.5 million. The '562 Patent claims a method for managing the substantial thermal loads generated by photonic integrated circuits through the use of embedded micro-channel heat sink structures with specific dimensional and structural characteristics. Effective thermal management is a critical design challenge for silicon-photonics transceivers operating at high data rates, and the '562 Patent represents a key solution that OWS has commercialized in its own product lines. The '562 Patent is in the same patent family as the '847 Patent.

U.S. Patent No. 11,402,015 ("the '015 Patent"). Entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," the '015 Patent was filed on August 30, 2019 and issued on August 2, 2022. The '015 Patent was originally assigned to OWS and remains owned by OWS. It claims priority to Provisional Application No. 62/499,117, filed April 7, 2017. The '015 Patent claims a polarization-diverse grating coupler structure that efficiently couples optical signals from an optical fiber into a silicon waveguide while accommodating arbitrary polarization states. The polarization-diverse grating coupler is a critical component that enables silicon-photonics transceivers to maintain performance across varying fiber conditions, and its design represents a significant improvement over prior-art coupling approaches that suffered from polarization-dependent loss.

The chain of title for each of the Asserted Patents is documented and confirmed by the Declaration of Rebecca Tanaka, OWS's General Counsel, and the supporting assignment records filed with the United States Patent and Trademark Office. See Tanaka Decl. ¶¶ 8–17; Exs. 1–4, 9.

B. OWS's Business and Competitive Position

OWS was founded in 2011 with a mission to develop and commercialize advanced silicon-photonics chipsets for next-generation data-center interconnects. Since its founding, OWS has invested hundreds of millions of dollars in research and development and has assembled a world-class engineering team and patent portfolio that positions it as one of the leading innovators in the silicon-photonics industry.

OWS is majority-owned by Ridgeline Capital Partners, LP, a private equity firm headquartered at 200 Clarendon Street, 40th Floor, Boston, Massachusetts 02116. Ridgeline, through its Managing Partner Franklin Osei, acquired a 55% ownership stake in OWS in 2019 for $780 million. Mr. Osei serves as Chair of OWS's Board of Directors.

The company is led by a seasoned executive team: Dr. Priya Ramaswamy serves as Chief Executive Officer; Dr. Jian-Wei Huang serves as Chief Technology Officer; Rebecca Tanaka serves as General Counsel; Dr. Nikolai Petrov serves as Vice President of Engineering for the Photonics Division; and David Leitner serves as Chief Financial Officer. OWS's financial statements are audited by Gresham & Whitfield LLP (San Jose office), and the company maintains a revolving credit facility of $125 million with Weston Fidelity Bank, N.A.

OWS's key product families — the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module lines — compete directly with Lumicore's accused products in the hyperscale data-center transceiver market. These products collectively represent a substantial majority of OWS's revenue. OWS's gross margin on these competing products is 47.3%, reflecting the significant engineering investment and proprietary technology embodied in each product. See Huang Decl. ¶¶ 4–15; Whitfield Decl. ¶¶ 3–12.

OWS competes head-to-head with Lumicore at twelve of the top twenty hyperscale data-center operators globally, and seven major hyperscale customers purchase transceiver modules from both OWS and Lumicore. The competitive overlap between the two companies is extensive and direct. See Whitfield Decl. ¶¶ 14–22; Ex. 22.

C. Lumicore's Accused Products and Infringing Conduct

Lumicore has developed and commercialized three transceiver module product lines that infringe OWS's Asserted Patents:

LumiLink 400G-ZR+. Lumicore launched the LumiLink 400G-ZR+ transceiver module in the third quarter of 2022. In fiscal year 2023, the LumiLink 400G-ZR+ generated revenue of $94.8 million. OWS accuses the LumiLink 400G-ZR+ of infringing the '847, '193, and '562 Patents.

LumiLink 800G-DR8. Lumicore launched the LumiLink 800G-DR8 transceiver module in the first quarter of 2023. In fiscal year 2023, the LumiLink 800G-DR8 generated revenue of $128.4 million. OWS accuses the LumiLink 800G-DR8 of infringing all four Asserted Patents — the '847, '193, '562, and '015 Patents.

LumiEdge 1600G-LR. Lumicore launched the LumiEdge 1600G-LR transceiver module in the fourth quarter of 2023 — notably, after Lumicore had received two detailed licensing letters identifying OWS's Asserted Patents, after Lumicore had participated in an in-person licensing meeting with OWS representatives, and after Lumicore had affirmatively declined to take a license. In fiscal year 2023, the LumiEdge 1600G-LR generated revenue of $41.7 million. OWS accuses the LumiEdge 1600G-LR of infringing the '193 and '015 Patents.

In total, Lumicore's accused products generated $264.9 million in revenue in fiscal year 2023, and they are projected to generate approximately $714.6 million through the currently scheduled trial date of February 2, 2026.

[New Accused Product]. [Placeholder — to be completed upon triggering event. Description of the new product, its specifications, its targeted market, the date of announcement, and the basis for OWS's assertion that it incorporates the same infringing technology as the other accused products.]

OWS asserts literal infringement of all asserted claims of the Asserted Patents by the applicable accused products. Additionally, as to Claims 3 and 7 of the '193 Patent and Claim 12 of the '015 Patent, OWS asserts infringement under the doctrine of equivalents. OWS served its Infringement Contentions pursuant to Patent Rule 3-1 on September 16, 2024. See Ex. 13.

Independent physical teardown analyses of all three currently accused products were performed by Benchmark Semiconductor Analysis, LLC, located at 2244 Mission College Boulevard, Santa Clara, California 95054, under the direction of Lead Engineer Kevin Ng. The teardown of the LumiLink 400G-ZR+ was completed on December 12, 2022; the teardown of the LumiLink 800G-DR8 was completed in June 2023; and the teardown of the LumiEdge 1600G-LR was completed in February 2024. Each teardown confirmed the presence of structures and features in the accused products that correspond to the asserted claim limitations of the Asserted Patents. See Ng Decl. ¶¶ 5–32; Exs. 10–12.

D. Pre-Suit Notice and Willful Infringement

The evidence of Lumicore's willful infringement is extensive and spans more than two years of pre-suit interactions between the parties.

In October 2022, OWS's engineering team first identified potential infringement of the '847, '193, and '562 Patents by Lumicore's LumiLink 400G-ZR+ transceiver module. In November 2022, OWS retained Benchmark Semiconductor Analysis, LLC to perform a physical teardown of the LumiLink 400G-ZR+. On December 12, 2022, Benchmark delivered its teardown report, which confirmed the presence of waveguide multiplexer structures and thermal management micro-channels matching the features claimed in the '847, '193, and '562 Patents. See Ex. 10.

On January 15, 2023, FairPoint Licensing Group, LLC — OWS's licensing agent, located at 500 Sansome Street, Suite 1400, San Francisco, California 94111, under Managing Director Angela Reeves — sent a detailed licensing and notice letter to Raymond Bautista, General Counsel of Lumicore, identifying the '847, '193, and '562 Patents and requesting that Lumicore enter into a licensing agreement. See Reeves Decl. ¶¶ 4–8; Ex. 5.

On February 28, 2023, Lumicore responded through its outside counsel, Catherine "Kate" Rourke of Hawthorne Vega & Cruz LLP, disputing infringement and questioning the validity of the identified patents. See Ex. 6.

On April 20, 2023, an in-person licensing meeting was held in Austin, Texas, attended by Angela Reeves and Rebecca Tanaka on behalf of OWS and Raymond Bautista and Kate Rourke on behalf of Lumicore. No resolution was reached. Ms. Reeves attested in her deposition on December 10, 2024 that Lumicore's representatives showed "no interest in negotiating" a license and that the meeting was unproductive. See Reeves Decl. ¶¶ 9–14; Ex. 17.

On May 15, 2023, FairPoint sent a second licensing letter to Lumicore, adding the '015 Patent (which had issued on August 2, 2022) and expanding the scope of accused products to include the LumiLink 800G-DR8. See Ex. 7.

On July 10, 2023, Lumicore formally declined to take a license, stating through counsel that it had obtained "competent legal opinions" that its products did not infringe OWS's patents. Lumicore refused to produce those opinions, asserting attorney-client privilege. See Ex. 8. OWS's Motion to Compel production of the opinion-of-counsel letters remains pending before this Court. See D.E. 38.

Despite this comprehensive notice, in the fourth quarter of 2023, Lumicore proceeded to launch the LumiEdge 1600G-LR module — a new product incorporating the same infringing silicon-photonics technology.

The evidence of willfulness extends beyond the pre-suit licensing correspondence. Former Lumicore engineer Melissa Chen, now employed by Veridian Photonics, Inc., has provided testimony that Lumicore's LumiLink 400G-ZR+ design team reviewed OWS's published patent applications — specifically Published Application No. 2018/0123456, corresponding to the '193 Patent — during the product design phase in 2021 and 2022. Dr. Sandra Michaud, Lumicore's Chief Technology Officer, admitted in her deposition on November 19, 2024 that she personally reviewed OWS's published application during the LumiLink design phase. See Ex. 15 (Michaud Dep. Tr.). Raymond Bautista, Lumicore's General Counsel, confirmed in his deposition on December 3, 2024 that he received FairPoint's January 15, 2023 letter and admitted that no formal design-around analysis was commissioned before the launch of the LumiEdge 1600G-LR. See Ex. 16 (Bautista Dep. Tr.).

This evidence demonstrates a pattern of deliberate infringement: Lumicore designed its products with knowledge of OWS's patent rights, received detailed written notice identifying the specific patents and the specific products at issue, refused to negotiate a license, failed to commission a design-around analysis, and proceeded to launch additional infringing products. This is precisely the type of willful, "copy first, ask questions later" conduct that warrants injunctive relief.

E. Procedural History

This action was filed on April 22, 2024. The procedural history is as follows:

• April 22, 2024: OWS filed its Original Complaint (D.E. 1), asserting seven counts: four counts of direct patent infringement (one per Asserted Patent), one count of induced infringement, one count of contributory infringement, and one count of willful infringement seeking enhanced damages under 35 U.S.C. § 284.

• June 17, 2024: Lumicore filed its Answer and Counterclaims (D.E. 12), asserting defenses of non-infringement, invalidity under 35 U.S.C. §§ 102 and 103, unenforceability based on alleged inequitable conduct, and a counterclaim for declaratory judgment of non-infringement. Lumicore also filed a Motion to Transfer Venue to the Western District of Texas (D.E. 13).

• August 5, 2024: Judge Gilstrap denied Lumicore's Motion to Transfer (D.E. 25), finding that the Eastern District of Texas is a proper and convenient venue for this action.

• August 12, 2024: The Court issued its Scheduling Order (D.E. 27), establishing the following key dates: Markman hearing on March 14, 2025; jury trial on February 2, 2026. See Ex. 23.

• September 16, 2024: OWS served its Infringement Contentions (D.E. 32) pursuant to Patent Rule 3-1.

• October 14, 2024: Lumicore served its Invalidity Contentions (D.E. 36) pursuant to Patent Rule 3-3.

• October 28, 2024: The parties filed their Joint Claim Construction Statement (D.E. 40), identifying fourteen disputed claim terms.

• November 15, 2024: OWS filed its Opening Claim Construction Brief (D.E. 44).

• December 6, 2024: Lumicore filed its Responsive Claim Construction Brief (D.E. 48).

• December 20, 2024: OWS filed its Reply Claim Construction Brief (D.E. 52).

• January 10, 2025: Lumicore filed its Sur-Reply Claim Construction Brief (D.E. 56).

• January 15, 2025: The parties filed their Joint Claim Construction Chart (final) (D.E. 58).

• March 14, 2025: Markman hearing (scheduled).

The remaining schedule provides for the close of fact discovery on May 1, 2025; plaintiff's expert reports due June 15, 2025; defendant's rebuttal expert reports due July 15, 2025; close of expert discovery on August 15, 2025; dispositive motions due September 15, 2025; Daubert motions due November 1, 2025; pre-trial conference on January 5, 2026; and jury trial commencing February 2, 2026.

Discovery in this action has been extensive. OWS has produced approximately 182,000 documents comprising approximately 1.4 million pages. Lumicore has produced approximately 147,000 documents comprising approximately 980,000 pages. A three-tier confidentiality order is in place, encompassing designations of "Confidential," "Highly Confidential — Attorneys' Eyes Only," and "Highly Confidential — Source Code."

The following depositions have been completed: Dr. Jian-Wei Huang, OWS Chief Technology Officer (November 5, 2024); Dr. Sandra Michaud, Lumicore Chief Technology Officer (November 19, 2024); Raymond Bautista, Lumicore General Counsel (December 3, 2024, limited due to privilege issues); Angela Reeves, FairPoint Licensing Group Managing Director (December 10, 2024); and Kevin Ng, Benchmark Semiconductor Analysis Lead Engineer (January 7, 2025).

OWS's Motion to Compel production of the opinion-of-counsel letters referenced in Lumicore's July 10, 2023 declination letter remains pending before this Court (D.E. 38).

F. The Triggering Event

[Placeholder — This section will be completed in full upon the occurrence of the triggering event. The section will describe the nature of the new product announcement or major customer win by Lumicore; explain in detail how the triggering event expands the scope of infringement and accelerates irreparable harm to OWS; provide the date and circumstances of the announcement; identify the new product by name, specifications, and targeted market; describe the customer(s) involved, if applicable; and detail the urgency requiring emergency relief, including the time-sensitive nature of design-in decisions and the competitive consequences of delay.]

III. LEGAL STANDARD

The issuance of a temporary restraining order and a preliminary injunction is governed by Federal Rule of Civil Procedure 65(a) and (b). In patent cases, the movant must demonstrate four factors: (1) a likelihood of success on the merits; (2) that the movant will suffer irreparable harm if injunctive relief is not granted; (3) that the balance of hardships tips in favor of the movant; and (4) that the public interest favors the issuance of injunctive relief.

In Northgate Group v. MercExchange, L.L.C., 547 U.S. 388 (2006), the Supreme Court held that the traditional four-factor test for equitable relief applies in patent cases, and that neither a categorical rule in favor of nor against injunctive relief is appropriate. While Cascade Holdings addressed the standard for permanent injunctions following a finding of infringement, the Federal Circuit has applied the same equitable framework to motions for preliminary injunctions in patent cases. See Robert Bosch LLC v. Pylon Mfg. Corp., 659 F.3d 1142, 1148–49 (Fed. Cir. 2011) (applying the four-factor Cascade Holdings framework to preliminary injunctions and holding that "the framework set out in Cascade Holdings applies to preliminary injunctions" in patent cases).

The Federal Circuit has further elaborated on the irreparable harm requirement, holding that a patent holder seeking a preliminary injunction must demonstrate a "causal nexus" between the alleged infringement and the claimed irreparable harm. Camberwell & Co. v. Northgate & Co. Elecs. Co., 695 F.3d 1370, 1374 (Fed. Cir. 2012). In Tidewater Industries, the Federal Circuit explained that the patent holder must show that the infringing features of the accused product are the features that drive consumer demand, such that the infringement — as opposed to other, non-infringing features — is the cause of the irreparable harm.

While the Federal Circuit has stated that a "clear showing" on each factor is required, no single factor is dispositive. See Robert Bosch, 659 F.3d at 1149. The court must weigh and consider all four factors in determining whether preliminary injunctive relief is warranted. The decision to grant or deny a preliminary injunction in a patent case is committed to the sound discretion of the district court, subject to review by the Federal Circuit for abuse of discretion. Id.

The standard for a temporary restraining order is substantially the same as for a preliminary injunction, with the additional requirement that the movant must demonstrate that immediate and irreparable injury will result before the adverse party can be heard in opposition. Fed. R. Civ. P. 65(b)(1)(A).

IV. ARGUMENT

A. OWS Is Likely to Succeed on the Merits

1. OWS Is Likely to Prove Infringement. OWS's infringement case is strong, well-developed, and supported by compelling physical evidence, expert analysis, and admissions from Lumicore's own officers.

Benchmark Semiconductor Analysis, LLC, under the direction of Lead Engineer Kevin Ng, performed independent physical teardown analyses of all three currently accused Lumicore products. These teardowns — conducted on December 12, 2022 (LumiLink 400G-ZR+), in June 2023 (LumiLink 800G-DR8), and in February 2024 (LumiEdge 1600G-LR) — confirmed the presence of structures and features in each accused product that correspond to the asserted claim limitations of the Asserted Patents. Mr. Ng's methodology, chain of custody, and findings are set forth in detail in his declaration. See Ng Decl. ¶¶ 5–32; Exs. 10–12.

The '847 Patent (Claims 1, 3, 5, 9, and 14). The teardowns of the LumiLink 400G-ZR+ and LumiLink 800G-DR8 each revealed multi-channel silicon photonic waveguide multiplexer structures that exhibit the low insertion loss characteristics claimed in the '847 Patent. The waveguide multiplexer architectures identified in the teardowns are structurally consistent with the claim limitations of Claims 1, 3, 5, 9, and 14 of the '847 Patent. Mr. Ng's element-by-element mapping, corroborated by scanning electron microscope ("SEM") imaging and optical characterization data, demonstrates that each limitation of the asserted claims is met by the corresponding structure in the accused products. See Ng Decl. ¶¶ 10–17; Ashford Decl. ¶¶ 22–38; Ex. 14.

The '193 Patent (Claims 1, 3, 7, 10, 15, and 18). All three accused products — the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR — contain high-bandwidth coherent optical transceiver components integrated on a silicon substrate that match the claimed architecture of the '193 Patent. The integration approach, signal-processing architecture, and silicon-substrate implementation identified through teardown and design-file analysis correspond to the limitations of Claims 1, 3, 7, 10, 15, and 18. As to Claims 3 and 7, OWS additionally asserts infringement under the doctrine of equivalents, supported by a function-way-result analysis demonstrating that the accused structures perform substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed elements. See Ashford Decl. ¶¶ 39–65; Ex. 14.

The '562 Patent (Claims 1, 4, 6, and 11). The LumiLink 400G-ZR+ and LumiLink 800G-DR8 contain embedded micro-channel heat sink structures that are identical in design principle and dimensional characteristics to the patented thermal management method claimed in the '562 Patent. Cross-sectional SEM imaging of the accused products reveals micro-channel architectures with the specific dimensional and structural characteristics recited in Claims 1, 4, 6, and 11 of the '562 Patent. See Ng Decl. ¶¶ 18–24; Ashford Decl. ¶¶ 66–82; Ex. 14.

The '015 Patent (Claims 1, 5, 8, 12, and 16). The LumiLink 800G-DR8 and LumiEdge 1600G-LR incorporate polarization-diverse grating coupler structures that correspond to the claimed structures of the '015 Patent. The grating coupler designs identified through teardown analysis exhibit the polarization-diversity characteristics recited in Claims 1, 5, 8, 12, and 16. As to Claim 12, OWS additionally asserts infringement under the doctrine of equivalents. See Ng Decl. ¶¶ 25–32; Ashford Decl. ¶¶ 83–98; Ex. 14.

The evidence of infringement is further bolstered by Dr. Sandra Michaud's deposition testimony. On November 19, 2024, Lumicore's Chief Technology Officer testified under oath that she could not identify specific non-infringing design alternatives for the accused products when questioned about the relevant patented features. See Ex. 15 (Michaud Dep. Tr. at 147:3–149:22). This admission is highly significant: the inability of the defendant's own CTO to identify design-around alternatives underscores both the strength of OWS's infringement case and the centrality of the patented technology to the accused products.

Additionally, Lumicore design files produced in discovery — designated as Highly Confidential — Source Code under the Court's protective order — further corroborate the element-by-element mapping set forth in OWS's infringement contentions and in the expert analyses of Dr. Ashford and Mr. Ng.

[Reference to the new accused product: Upon the triggering event, this section will be supplemented with an analysis of the [New Accused Product], explaining how the same infringing technology identified in the existing accused products appears in the new product, and describing any additional teardown or preliminary analysis conducted by Benchmark Semiconductor Analysis.]

Dr. Caroline Ashford, Professor of Electrical Engineering and Photonics at the Northfield Institute of Technology in Evanston, Illinois, has been retained as OWS's technical expert. Dr. Ashford has provided a detailed declaration, attached hereto, in which she opines that each accused product infringes each asserted claim of each applicable Asserted Patent. Dr. Ashford's opinions are based on her review of the Benchmark teardown reports, the design files produced in discovery, the relevant prior art, and the prosecution histories of the Asserted Patents. See Ashford Decl. ¶¶ 1–115.

2. Lumicore's Validity Defenses Are Unlikely to Succeed. Lumicore's invalidity contentions, served on October 14, 2024, cite a total of twenty-three prior-art references across the four Asserted Patents. OWS has carefully analyzed each of these references and submits that none, individually or in combination, renders any asserted claim invalid.

The '847 Patent. Lumicore's principal invalidity reference for the '847 Patent is Takahashi et al., "Dense WDM Silicon Photonic MUX," published in IEEE Photonics Technology Letters in March 2014. The Takahashi reference describes a wavelength-division multiplexing structure on a silicon photonic platform, but it fails to disclose the multi-channel waveguide multiplexer architecture with the specific low-insertion-loss characteristics claimed in the '847 Patent. The Takahashi system employs a different waveguide geometry and coupling approach that does not achieve the claimed insertion-loss performance. The structural and performance distinctions between the Takahashi reference and the '847 Patent claims are set forth in detail in Dr. Ashford's declaration. See Ashford Decl. ¶¶ 99–104. The Takahashi reference does not anticipate the '847 Patent claims, and Lumicore's obviousness theories based on combinations including Takahashi lack the requisite motivation to combine and fail to account for the specific structural features that distinguish the '847 Patent.

The '562 Patent. Lumicore relies on the Bergmann patent (U.S. Patent No. 8,412,007, issued April 2, 2013) and Dr. Li Wei's conference paper ("Thermal Solutions for PICs," presented at OFC 2013 in March 2013) to challenge the validity of the '562 Patent. Neither reference, individually or in combination, renders the '562 claims obvious. The Bergmann patent discloses heat-sink structures for electronic — not photonic — integrated circuits, and lacks the embedded micro-channel heat sink architecture with the specific dimensional and structural characteristics recited in the '562 claims. Dr. Wei's conference paper provides a general overview of thermal management approaches but does not disclose the claimed micro-channel dimensions, materials, or integration methods. See Ashford Decl. ¶¶ 105–110.

The '015 Patent. In addition to prior-art references, Lumicore has asserted a prior-conception defense based on internal design documents allegedly dated 2016 through 2017. However, this defense fails for at least two reasons. First, the internal documents lack the requisite independent corroboration to establish a date of conception prior to the '015 Patent's priority date, which extends back through Provisional Application No. 62/499,117 filed on April 7, 2017. Second, even accepting the purported dates at face value, several of the documents post-date the filing date of the provisional application and therefore cannot serve as prior art. See Ashford Decl. ¶¶ 111–115.

Inequitable Conduct. Lumicore's inequitable conduct counterclaim alleges that Dr. Jian-Wei Huang, OWS's CTO and a named inventor on the '193 Patent, failed to disclose a prior publication during prosecution of the '193 Patent. This defense is weak. The allegedly withheld reference is cumulative of prior art that was already cited by the patent examiner during prosecution. Under well-established Federal Circuit precedent, the failure to disclose a cumulative reference does not establish the materiality required for inequitable conduct. Moreover, Lumicore cannot establish the requisite specific intent to deceive — the "single most reasonable inference" standard articulated in Brightmoor & Co., Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc) — because the record shows no affirmative act of concealment and no credible motive to withhold a reference that adds nothing to the prior art already before the examiner.

Secondary Considerations. The secondary considerations of nonobviousness strongly favor OWS. First, commercial success: approximately $310 million of OWS's FY 2023 revenue of $487.3 million is attributable to products that practice the Asserted Patents, demonstrating the substantial commercial value of the patented innovations. Second, long-felt need: the industry had long sought low-insertion-loss waveguide multiplexing solutions for high-density silicon-photonics applications, and OWS's inventions addressed this need. Third, failure of others: at least three competitors attempted similar designs before OWS's innovations, but none achieved the performance and integration advantages claimed in the Asserted Patents. Fourth, copying: the deposition testimony of Dr. Michaud and the anticipated testimony of former Lumicore engineer Melissa Chen establish that Lumicore's design team reviewed OWS's published patent applications and developed products that employ the same technological approaches.

Finally, it is significant that no IPR petitions have been filed as to any of the Asserted Patents. Under 35 U.S.C. § 315(b), Lumicore's one-year time bar for filing an IPR petition runs on May 1, 2025 (one year from service of the complaint). The absence of an IPR filing to date further supports the strength of the Asserted Patents.

3. OWS Is Likely to Prove Willful Infringement. The evidence of willfulness is not merely sufficient — it is compelling, and it independently supports the need for injunctive relief by demonstrating that Lumicore will continue to expand its infringing activities unless restrained by this Court.

FairPoint's January 15, 2023 letter placed Lumicore on actual notice of the '847, '193, and '562 Patents and identified the specific Lumicore product accused of infringement. The May 15, 2023 supplemental letter expanded the scope of notice to include the '015 Patent and the LumiLink 800G-DR8. Despite this notice — and despite an in-person licensing meeting at which OWS's representatives made a good-faith effort to resolve the dispute through a license — Lumicore refused to negotiate, refused to take a license, and proceeded to launch the LumiEdge 1600G-LR in the fourth quarter of 2023.

Lumicore referenced "competent legal opinions" in its July 10, 2023 declination letter, but has refused to produce those opinions, asserting privilege. The refusal to disclose allegedly exonerating legal opinions, when coupled with Lumicore's continued and expanding infringement, permits the inference that the opinions are either non-existent or unfavorable. OWS's motion to compel production of these opinions remains pending before this Court (D.E. 38).

Dr. Sandra Michaud, Lumicore's CTO, admitted under oath that she reviewed OWS's Published Application No. 2018/0123456 — the published version of the application that matured into the '193 Patent — during the design phase of the LumiLink product line. See Ex. 15. Raymond Bautista, Lumicore's General Counsel, admitted under oath that he received the FairPoint licensing letters and that no formal design-around analysis was commissioned before the launch of the LumiEdge 1600G-LR. See Ex. 16. And former Lumicore engineer Melissa Chen has provided testimony establishing that Lumicore's design team accessed OWS's published patent applications in 2021 and 2022 during the product development process.

[Upon the triggering event, this section will be supplemented with a discussion of the new product launch as a continuation of Lumicore's pattern of willful disregard for OWS's patent rights.]

This record of deliberate infringement, conducted with knowledge of OWS's patents and in defiance of specific notice, demonstrates that Lumicore will not voluntarily cease its infringing activities. Injunctive relief is necessary to prevent further harm.

B. OWS Will Suffer Irreparable Harm Absent Injunctive Relief

1. Direct Competition and Market Erosion. OWS and Lumicore are direct competitors in the silicon-photonics transceiver module market for hyperscale data centers. This is not a case where the patent holder and the alleged infringer operate in separate market segments or serve different customer bases. To the contrary, OWS and Lumicore compete head-to-head at twelve of the top twenty hyperscale data-center operators, and seven major hyperscale customers purchase transceiver modules from both companies. OWS's key products — the OWS-400ZR, OWS-800XR, and OWS-1600DR — directly compete with each of Lumicore's accused product lines for the same purchase orders, the same design-in opportunities, and the same long-term customer relationships. See Whitfield Decl. ¶¶ 14–22; Ex. 22.

The competitive dynamics of the hyperscale data-center transceiver market make the irreparable harm from Lumicore's infringement particularly acute. In this market, the "design-in" is the critical event. When a hyperscale data-center operator selects a transceiver module for deployment in a new data-center build or infrastructure refresh, that design-in typically locks in the selected vendor for a period of three to five years. The design-in process involves extensive qualification testing, integration with the customer's networking infrastructure, and deployment planning. Once a customer completes this process with a particular vendor's product, switching to an alternative vendor is prohibitively costly and disruptive. As a result, lost design-in opportunities are effectively permanent — they cannot be recaptured through monetary damages. See Huang Decl. ¶¶ 20–28; Whitfield Decl. ¶¶ 23–31.

OWS has compiled specific evidence of customer diversion attributable to Lumicore's accused products. The Declaration of Karen Whitfield, OWS's Vice President of Sales, together with declarations from three regional sales directors, identifies specific instances in which OWS has lost design-in opportunities to Lumicore's infringing products and instances in which customers have indicated an intent to switch from OWS to Lumicore for their next generation of transceiver deployments. See Whitfield Decl. ¶¶ 32–48.

2. Price Erosion. The average selling price ("ASP") of 400G-ZR transceiver modules declined by 18.7% from the third quarter of 2022 — the quarter in which Lumicore launched the LumiLink 400G-ZR+ — through the fourth quarter of 2023. See Ex. 19. OWS attributes a significant portion of this price erosion to Lumicore's market entry with infringing products sold at aggressively low pricing. When a competitor enters the market with infringing products, free from the burden of licensing costs or the substantial R&D investments required to develop non-infringing alternatives, that competitor can undercut the innovator's pricing and drive down prices industry-wide.

Price erosion is a paradigmatic form of irreparable harm in patent cases precisely because it is difficult to quantify with precision and cannot be fully compensated by monetary damages. Once prices are driven down across the market, they do not recover to their pre-infringement levels. The downward price pressure created by Lumicore's infringing products affects not only OWS's sales to customers who have been diverted to Lumicore but also OWS's sales to customers who remain with OWS but demand lower prices in response to the competitive pressure created by Lumicore's offerings.

Gregory Falk, an independent industry consultant and former Vice President of Engineering at Solara Optics, Inc., has analyzed the competitive dynamics of the silicon-photonics transceiver market and the price erosion attributable to Lumicore's entry with infringing products. Mr. Falk will opine that the price erosion is directly linked to Lumicore's market presence and that it cannot be fully remedied by monetary damages. See Falk Decl. ¶¶ 12–28.

3. Loss of Goodwill, Customer Relationships, and Market Position. OWS is the third-largest U.S. supplier of silicon-photonics transceiver modules for hyperscale data centers. Lumicore's rapid growth — fueled in significant part by its accused products — threatens OWS's competitive position in this strategically important market. Lumicore's FY 2023 accused-product revenue of $264.9 million represents a significant and growing share of the market, and each new product launch and customer win by Lumicore compounds the harm to OWS by further entrenching Lumicore's infringing technology in customer deployments.

The loss of customer relationships and brand reputation in the hyperscale data-center market is particularly difficult to quantify and remedy. Customer relationships in this market are built over years of collaborative engagement, technical support, and proven product performance. Once a customer shifts its purchasing to a competitor, the relationship is damaged in ways that cannot be captured by a monetary award. See Whitfield Decl. ¶¶ 49–58.

Each new product launch by Lumicore, including the triggering product at issue in this motion, compounds the irreparable harm by establishing Lumicore's infringing technology in additional customer deployments and further eroding OWS's market position and customer relationships.

4. Monetary Damages Cannot Fully Compensate OWS. While OWS seeks approximately $210 million in damages in this action, monetary relief alone is inadequate to compensate for the competitive harm caused by Lumicore's infringement. The inadequacy of monetary damages arises from several independent factors:

Lost design-in opportunities cannot be recaptured. Design-in decisions in the hyperscale data-center market lock in vendors for three to five years. Monetary damages awarded at trial in February 2026 cannot undo the customer commitments made during the pendency of this litigation.

Price erosion is industry-wide and permanent. Once prices are driven down by the competitive pressure of infringing products, they do not recover. A damages award cannot restore the pricing levels that prevailed before Lumicore's entry.

Loss of market position and goodwill are not quantifiable. OWS's competitive standing, customer relationships, and brand reputation are intangible assets that defy precise monetary valuation.

Lumicore continues to gain customers and market share with each passing day. The harm to OWS is not static — it compounds over time as Lumicore wins additional design-ins, expands its customer base, and further entrenches its infringing products in the market.

Importantly, OWS is a practicing entity — not a non-practicing entity. OWS practices the Asserted Patents through its own commercial products and competes directly with Lumicore's accused products. The Federal Circuit has recognized that practicing entities face irreparable harm from infringement that is qualitatively different from, and more severe than, the harm to non-practicing entities. See Robert Bosch, 659 F.3d at 1153.

5. The Triggering Event Accelerates Irreparable Harm. [Placeholder — This subsection will be completed upon the occurrence of the triggering event. It will provide a specific discussion of how the new product announcement or major customer win creates heightened, imminent irreparable harm that cannot wait until the February 2, 2026 trial date. The discussion will address the specific competitive threat posed by the triggering event, the time-sensitive nature of the design-in decisions at stake, the projected revenue and market-share impact, and the acceleration of harm that warrants emergency relief.]

C. The Balance of Hardships Favors OWS

The balance of hardships tilts decidedly in favor of OWS.

Hardship to OWS absent injunctive relief. As detailed above, OWS faces continued and accelerating loss of market share, customer relationships, design-in opportunities, and pricing power. OWS is a company with $487.3 million in FY 2023 revenue and approximately 1,250 employees whose livelihoods depend on OWS's ability to compete effectively in the market. The harm to OWS is ongoing, compounding, and will be substantially irreversible by the time this case reaches trial on February 2, 2026.

Hardship to Lumicore if injunctive relief is granted. OWS acknowledges that an injunction would impose costs on Lumicore. Lumicore has indicated in discovery that a redesign of its accused products to avoid the Asserted Patents would take approximately eighteen to twenty-four months. Additionally, approximately 42% of Lumicore's product revenue is attributable to the accused products.

However, the hardship to Lumicore must be weighed in light of the full circumstances. Several factors diminish the weight of Lumicore's claimed hardship:

First, Lumicore brought this hardship upon itself through its deliberate decision to design, launch, and expand infringing product lines after receiving actual notice of OWS's patent rights. A party that knowingly infringes another's patents and then claims hardship from the consequences of that infringement is entitled to limited sympathy. See Robert Bosch, 659 F.3d at 1155 ("One who elects to build a business on a product found to infringe cannot be heard to complain if an injunction against continuing infringement destroys the business so elected.").

Second, Lumicore is a publicly traded company with a market capitalization of approximately $3.4 billion and FY 2023 revenue of approximately $312.6 million. Lumicore has the financial resources to pursue non-infringing design alternatives, as it should have done upon receiving OWS's licensing notices in 2023.

Third, Lumicore retains the remaining approximately 58% of its product revenue from non-accused products. An injunction limited to the accused products would not shut down Lumicore's business; it would simply require Lumicore to compete with non-infringing products.

The balance tips further in OWS's favor given the strong evidence of willful infringement. When a defendant has deliberately infringed with knowledge of the patent holder's rights, the balance of hardships should weigh more heavily against the infringer. See id.

OWS is willing to post a reasonable bond, as discussed below, to protect Lumicore against any wrongful injunction.

D. The Public Interest Favors Injunctive Relief

The public interest strongly favors the issuance of injunctive relief in this case. Strong patent rights incentivize the kind of innovation and R&D investment that OWS has made in developing the silicon-photonics technologies at issue — technologies that are critical to the data-center infrastructure upon which the digital economy depends. OWS has invested hundreds of millions of dollars in research and development, has built a patent portfolio of 142 issued U.S. patents and 58 pending applications, and has commercialized its innovations through products that serve the needs of hyperscale data-center operators worldwide.

The public interest is served by enforcing valid patents against willful infringers. The patent system exists to incentivize innovation by granting inventors a limited monopoly in exchange for public disclosure. When a competitor copies a patented invention, receives actual notice of the infringement, refuses to take a license, and continues to expand its infringing activities, the public interest demands that the courts enforce the patent holder's rights through injunctive relief.

Equally important, there are non-infringing alternatives available in the market from other suppliers. An injunction against Lumicore will not deprive data-center operators of access to transceiver modules. Other qualified suppliers, including OWS itself, stand ready to serve the market's needs.

Permitting Lumicore to continue infringing pending trial would undermine the patent system and send a message that companies can pursue a strategy of deliberate infringement with impunity — "copy first, ask questions later" — confident that they will face, at most, a damages award years after the harm has been inflicted. The public interest is not served by such an outcome.

V. BOND UNDER RULE 65(c)

OWS acknowledges that Federal Rule of Civil Procedure 65(c) requires that a temporary restraining order or preliminary injunction shall not issue except upon the giving of security by the applicant "in an amount that the court considers proper, for the payment of such costs and damages as may be incurred or suffered by any party who is found to have been wrongfully enjoined or restrained."

OWS is prepared to post a bond in an amount to be set by the Court. Heritage National Surety Co. has been identified as a potential surety for the injunction bond, and OWS has made preliminary arrangements for the issuance of a surety bond.

OWS respectfully submits that the bond amount should reflect Lumicore's actual provable damages from the injunction during the TRO and preliminary injunction period, rather than the total accused-product revenue. The bond is intended to compensate for the costs and damages that would result if the injunction is later found to have been wrongful — not to provide a guarantee of Lumicore's full revenue stream.

OWS's financial condition amply supports its ability to post a substantial bond. In fiscal year 2023, OWS reported revenue of $487.3 million and net income of $61.4 million. OWS maintains a revolving credit facility of $125 million with Weston Fidelity Bank, N.A. OWS is majority-owned by Ridgeline Capital Partners, LP, which acquired its 55% stake for $780 million. In addition, OWS maintains litigation cost insurance through Pacific Rim Insurance Group under Policy No. PLI-2023-08812.

VI. CONCLUSION AND PRAYER FOR RELIEF

For the foregoing reasons, Plaintiff Optiwave Semiconductor Corp. respectfully requests that the Court:

1. Issue a temporary restraining order effective immediately upon entry, enjoining Defendant Lumicore Technologies, Inc., its officers, agents, servants, employees, attorneys, and all persons in active concert or participation with Lumicore, from making, using, selling, offering to sell, or importing into the United States the LumiLink 400G-ZR+, LumiLink 800G-DR8, LumiEdge 1600G-LR, [New Accused Product], and any colorable imitations thereof;

2. Set a hearing on OWS's motion for preliminary injunction on an expedited schedule, within fourteen days of entry of the temporary restraining order;

3. Enter a preliminary injunction maintaining the status quo and continuing the injunctive relief through trial;

4. Set the bond amount in an amount to be determined by the Court; and

5. Grant such other and further relief as the Court deems just and proper.

Respectfully submitted,

CALDERWOOD & HARKNESS LLP

By: ________

Alan Ngo (CA Bar No. __) Admitted Pro Hac Vice 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-1800

Email: ango@calderwoodharkness.com

Marcus Delgado (TX Bar No. __) 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-1800

Email: mdelgado@calderwoodharkness.com

Wendy Schultz (CA Bar No. __) Admitted Pro Hac Vice 1201 F Street NW, Suite 700 Washington, DC 20004 Telephone: (202) 555-2400

Email: wschultz@calderwoodharkness.com

Omar Siddiqui (CA Bar No. __) Admitted Pro Hac Vice 1201 F Street NW, Suite 700 Washington, DC 20004 Telephone: (202) 555-2400

Email: osiddiqui@calderwoodharkness.com

Attorneys for Plaintiff Optiwave Semiconductor Corp.

WHITMORE & CALLAHAN LLP

By: ________

James "Jim" Callahan (TX Bar No. __) 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 555-4100

Email: jcallahan@whitmorecallahan.com

Local Counsel for Plaintiff Optiwave Semiconductor Corp.

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

Hon. James R. Gilstrap

[PROPOSED] ORDER GRANTING PLAINTIFF'S MOTION FOR TEMPORARY RESTRAINING ORDER

The Court, having considered Plaintiff Optiwave Semiconductor Corp.'s Emergency Motion for Temporary Restraining Order and Preliminary Injunction (D.E. _), the supporting Memorandum of Points and Authorities, the Declarations of Dr. Jian-Wei Huang, Rebecca Tanaka, Kevin Ng, Dr. Caroline Ashford, Karen Whitfield, Gregory Falk, Angela Reeves, and Alan Ngo, the Exhibits attached thereto, and for good cause shown, hereby ORDERS as follows:

FINDINGS

The Court finds that Plaintiff Optiwave Semiconductor Corp. has demonstrated:

1. A likelihood of success on the merits of its claims that Defendant Lumicore Technologies, Inc.'s LumiLink 400G-ZR+, LumiLink 800G-DR8, LumiEdge 1600G-LR, and [New Accused Product] transceiver modules infringe one or more claims of U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015;

2. That Plaintiff will suffer irreparable harm absent a temporary restraining order, including but not limited to loss of market share, customer diversion, erosion of design-in opportunities, price erosion, and damage to goodwill and competitive position;

3. That the balance of hardships tips in favor of Plaintiff, considering the evidence of Defendant's willful infringement after receiving actual notice of Plaintiff's patent rights and the availability of non-accused product lines constituting approximately 58% of Defendant's revenue; and

4. That the public interest favors granting the temporary restraining order, as enforcement of valid patent rights incentivizes innovation and non-infringing alternatives remain available in the market.

ORDER

IT IS HEREBY ORDERED that Defendant Lumicore Technologies, Inc., its officers (including, without limitation, Chief Executive Officer Thomas "Tom" 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), agents, servants, employees, attorneys, and all persons in ac

DRAFT — CONTINGENCY — ON HOLD PER CLIENT INSTRUCTION Prepared by Calderwood & Harkness LLP Responsible Partner: Alan Ngo | Lead Associate: Wendy Schultz | Working Associate: Omar Siddiqui Date of Draft: [To be inserted upon triggering event]
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
Hon. James R. Gilstrap
PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S EMERGENCY MOTION FOR TEMPORARY RESTRAINING ORDER AND PRELIMINARY INJUNCTION
Alan Ngo (CA Bar No. __; *admitted pro hac vice* E.D. Tex.) Marcus Delgado (TX Bar No. _) Wendy Schultz (CA Bar No. _; *admitted pro hac vice* E.D. Tex.) Omar Siddiqui (CA Bar No. __; admitted pro hac vice E.D. Tex.) CALDERWOOD & HARKNESS LLP 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-1800 Facsimile: (213) 555-1801
1201 F Street NW, Suite 700 Washington, DC 20004 Telephone: (202) 555-2400 Facsimile: (202) 555-2401
James "Jim" Callahan (TX Bar No. __) WHITMORE & CALLAHAN LLP 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 555-4100 Facsimile: (903) 555-4101
Attorneys for Plaintiff Optiwave Semiconductor Corp.
NOTICE OF MOTION
TO THE COURT AND ALL PARTIES AND THEIR ATTORNEYS OF RECORD:
PLEASE TAKE NOTICE that Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") hereby moves this Court, pursuant to Federal Rule of Civil Procedure 65(a) and (b), for entry of a temporary restraining order and preliminary injunction against Defendant Lumicore Technologies, Inc. ("Lumicore" or "Defendant"). Plaintiff respectfully requests that this motion be heard on an expedited basis due to the imminent and irreparable harm OWS faces as a result of Defendant's continued and expanding patent infringement.
By this motion, OWS requests that the Court temporarily and preliminarily enjoin Lumicore Technologies, Inc., its officers, agents, servants, employees, attorneys, and all persons in active concert or participation with Lumicore, from:
(a) Making, using, selling, offering to sell, or importing into the United States the LumiLink 400G-ZR+, LumiLink 800G-DR8, LumiEdge 1600G-LR transceiver modules, and the [New Accused Product], and any other products incorporating the same infringing technology;
(b) Marketing, advertising, or soliciting orders for any of the foregoing products; and
(c) Making, using, selling, offering to sell, or importing into the United States any colorable imitations of the foregoing products.
This motion is directed to the infringement of four United States patents owned by OWS: U.S. Patent No. 10,234,847 ("the '847 Patent"), U.S. Patent No. 10,891,193 ("the '193 Patent"), U.S. Patent No. 9,678,562 ("the '562 Patent"), and U.S. Patent No. 11,402,015 ("the '015 Patent") (collectively, the "Asserted Patents").
This motion is supported by the accompanying Memorandum of Points and Authorities in Support of Plaintiff's Emergency Motion for Temporary Restraining Order and Preliminary Injunction, the Declarations of Dr. Jian-Wei Huang, Rebecca Tanaka, Kevin Ng, Dr. Caroline Ashford, Karen Whitfield, Gregory Falk, Angela Reeves, and Alan Ngo, together with the Exhibits attached thereto, and such further evidence and argument as may be presented at the hearing on this motion.
MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S EMERGENCY MOTION FOR TEMPORARY RESTRAINING ORDER AND PRELIMINARY INJUNCTION
Right-click to update Table of Contents
I. INTRODUCTION
This case involves the deliberate, willful, and expanding infringement of four United States patents by Defendant Lumicore Technologies, Inc. in the fast-moving and fiercely competitive market for silicon-photonics transceiver modules used in hyperscale data centers. Plaintiff Optiwave Semiconductor Corp. — the innovator and patent holder — now comes before this Court seeking emergency relief to halt Lumicore's continued and accelerating infringement, which threatens to cause OWS irreparable competitive harm that cannot be remedied by monetary damages alone.
Optiwave Semiconductor Corp. is a Delaware corporation headquartered at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054. OWS is a fabless semiconductor company specializing in the design and commercialization of silicon photonics chipsets for data-center interconnects — the critical optical networking components that enable the massive data flows upon which modern cloud computing, artificial intelligence, and enterprise infrastructure depend. OWS is the third-largest U.S. supplier of silicon-photonics transceiver modules for hyperscale data centers, and its innovations are protected by an extensive intellectual property portfolio comprising 142 issued United States patents and 58 pending patent applications. In fiscal year 2023, OWS generated revenue of $487.3 million and employed approximately 1,250 people across its operations in Santa Clara, California; Austin, Texas; and Portland, Oregon. OWS's key product families — the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module lines — represent the direct commercial embodiment of the patented technologies at issue in this action.
Lumicore Technologies, Inc. is a Delaware corporation headquartered at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. Lumicore is a fast-growing competitor in the silicon-photonics transceiver market, targeting hyperscale and telecom customers. In fiscal year 2023, Lumicore reported revenue of approximately $312.6 million. Lumicore completed its initial public offering on the Nasdaq exchange in March 2022 at $24.00 per share, and its shares trade at approximately $37.00 per share as of the date of this filing, giving the company a market capitalization of approximately $3.4 billion based on 91.8 million shares outstanding.
The heart of this dispute centers on Lumicore's accused product lines — the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR transceiver modules — which collectively generated approximately $264.9 million in revenue in fiscal year 2023 alone. These products are projected to generate approximately $714.6 million through the currently scheduled trial date of February 2, 2026. Each of these products incorporates silicon-photonics technology that infringes one or more of OWS's Asserted Patents, as confirmed by independent physical teardown analysis, expert review, and, remarkably, admissions by Lumicore's own Chief Technology Officer.
OWS commenced this action on April 22, 2024, asserting seven counts: four counts of direct patent infringement, one count of induced infringement, one count of contributory infringement, and one count of willful infringement seeking enhanced damages under 35 U.S.C. § 284. The evidence of willfulness is compelling: OWS provided Lumicore with detailed written notice of infringement beginning on January 15, 2023, through its licensing agent FairPoint Licensing Group, LLC. Despite this notice, Lumicore refused to take a license, refused to commission a design-around analysis, and proceeded to launch yet another infringing product — the LumiEdge 1600G-LR — in the fourth quarter of 2023.
Now, Lumicore has taken yet another step to expand its infringing activities. [Placeholder — description of the triggering event: Lumicore's announcement of a new product incorporating the same infringing technology, or a major customer win that would expand the scope of infringement and irreparable harm to OWS.] This triggering event compels OWS to seek emergency injunctive relief. Each day that Lumicore continues to sell, market, and expand its infringing product lines, OWS suffers irreparable competitive harm — loss of design-in opportunities that cannot be recaptured, erosion of prices that cannot be restored, diversion of customers who cannot be recovered, and damage to market position and goodwill that cannot be measured or compensated by a monetary award at the conclusion of trial. The trial in this matter is not scheduled to commence until February 2, 2026 — more than [number] months from now — and the harm to OWS will be profound and permanent unless this Court intervenes.
OWS respectfully submits that each of the four factors governing the issuance of a temporary restraining order and preliminary injunction is satisfied, and that emergency relief is warranted.
II. STATEMENT OF FACTS
A. The Asserted Patents
OWS is the owner by assignment of each of the four Asserted Patents. Each patent is directed to innovations in silicon-photonics technology that are critical to the design and performance of modern transceiver modules for data-center interconnects. All four patents are utility patents, all maintenance fees are current, and no inter partes review ("IPR") petitions have been filed as to any of them as of the date of this motion. The patents were prosecuted by Cascade IP Advisors, LLC, located at 1550 Crystal Drive, Suite 600, Arlington, Virginia 22202, with Dr. Martin Chu serving as lead prosecution attorney.
U.S. Patent No. 10,234,847 ("the '847 Patent"). Entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss," the '847 Patent was filed on September 14, 2016 and issued on March 19, 2019. The '847 Patent was originally assigned to OWS and remains owned by OWS. The '847 Patent claims a novel multi-channel silicon photonic waveguide multiplexer architecture that achieves significantly lower insertion loss than prior-art designs, thereby enabling higher-performance optical signal routing within photonic integrated circuits used in transceiver modules. The low-insertion-loss characteristics claimed in the '847 Patent represent a critical breakthrough that allowed OWS and the industry to achieve the data rates and channel densities demanded by hyperscale data-center operators. The '847 Patent is in the same patent family as the '562 Patent, sharing a continuation relationship.
U.S. Patent No. 10,891,193 ("the '193 Patent"). Entitled "High-Bandwidth coherent Optical Transceiver Integrated on Silicon Substrate," the '193 Patent was filed on April 7, 2017 and issued on January 12, 2021. The '193 Patent was originally assigned to OWS and remains owned by OWS. It claims priority to Provisional Application No. 62/499,117, filed April 7, 2017. The '193 Patent claims a high-bandwidth coherent optical transceiver design integrated on a silicon substrate, representing an advance in the integration of optical and electronic components on a single chip platform. The coherent transceiver architecture claimed in the '193 Patent enables the transmission and reception of optical signals at data rates of 400 gigabits per second and above while maintaining signal integrity over extended distances — a capability that is essential for the backbone interconnects used in hyperscale data centers. The '193 Patent shares Provisional Application No. 62/499,117 with the '015 Patent.
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," the '562 Patent was filed on November 22, 2014 and issued on June 13, 2017. The '562 Patent was originally assigned to Solara Optics, Inc. OWS acquired the '562 Patent, along with eleven other patents, pursuant to an Asset Purchase Agreement dated June 15, 2018 between OWS and Solara Optics, Inc. The aggregate purchase price for the twelve-patent portfolio was $34.5 million. The '562 Patent claims a method for managing the substantial thermal loads generated by photonic integrated circuits through the use of embedded micro-channel heat sink structures with specific dimensional and structural characteristics. Effective thermal management is a critical design challenge for silicon-photonics transceivers operating at high data rates, and the '562 Patent represents a key solution that OWS has commercialized in its own product lines. The '562 Patent is in the same patent family as the '847 Patent.
U.S. Patent No. 11,402,015 ("the '015 Patent"). Entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," the '015 Patent was filed on August 30, 2019 and issued on August 2, 2022. The '015 Patent was originally assigned to OWS and remains owned by OWS. It claims priority to Provisional Application No. 62/499,117, filed April 7, 2017. The '015 Patent claims a polarization-diverse grating coupler structure that efficiently couples optical signals from an optical fiber into a silicon waveguide while accommodating arbitrary polarization states. The polarization-diverse grating coupler is a critical component that enables silicon-photonics transceivers to maintain performance across varying fiber conditions, and its design represents a significant improvement over prior-art coupling approaches that suffered from polarization-dependent loss.
The chain of title for each of the Asserted Patents is documented and confirmed by the Declaration of Rebecca Tanaka, OWS's General Counsel, and the supporting assignment records filed with the United States Patent and Trademark Office. See Tanaka Decl. ¶¶ 8–17; Exs. 1–4, 9.
B. OWS's Business and Competitive Position
OWS was founded in 2011 with a mission to develop and commercialize advanced silicon-photonics chipsets for next-generation data-center interconnects. Since its founding, OWS has invested hundreds of millions of dollars in research and development and has assembled a world-class engineering team and patent portfolio that positions it as one of the leading innovators in the silicon-photonics industry.
OWS is majority-owned by Ridgeline Capital Partners, LP, a private equity firm headquartered at 200 Clarendon Street, 40th Floor, Boston, Massachusetts 02116. Ridgeline, through its Managing Partner Franklin Osei, acquired a 55% ownership stake in OWS in 2019 for $780 million. Mr. Osei serves as Chair of OWS's Board of Directors.
The company is led by a seasoned executive team: Dr. Priya Ramaswamy serves as Chief Executive Officer; Dr. Jian-Wei Huang serves as Chief Technology Officer; Rebecca Tanaka serves as General Counsel; Dr. Nikolai Petrov serves as Vice President of Engineering for the Photonics Division; and David Leitner serves as Chief Financial Officer. OWS's financial statements are audited by Gresham & Whitfield LLP (San Jose office), and the company maintains a revolving credit facility of $125 million with Weston Fidelity Bank, N.A.
OWS's key product families — the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module lines — compete directly with Lumicore's accused products in the hyperscale data-center transceiver market. These products collectively represent a substantial majority of OWS's revenue. OWS's gross margin on these competing products is 47.3%, reflecting the significant engineering investment and proprietary technology embodied in each product. See Huang Decl. ¶¶ 4–15; Whitfield Decl. ¶¶ 3–12.
OWS competes head-to-head with Lumicore at twelve of the top twenty hyperscale data-center operators globally, and seven major hyperscale customers purchase transceiver modules from both OWS and Lumicore. The competitive overlap between the two companies is extensive and direct. See Whitfield Decl. ¶¶ 14–22; Ex. 22.
C. Lumicore's Accused Products and Infringing Conduct
Lumicore has developed and commercialized three transceiver module product lines that infringe OWS's Asserted Patents:
LumiLink 400G-ZR+. Lumicore launched the LumiLink 400G-ZR+ transceiver module in the third quarter of 2022. In fiscal year 2023, the LumiLink 400G-ZR+ generated revenue of $94.8 million. OWS accuses the LumiLink 400G-ZR+ of infringing the '847, '193, and '562 Patents.
LumiLink 800G-DR8. Lumicore launched the LumiLink 800G-DR8 transceiver module in the first quarter of 2023. In fiscal year 2023, the LumiLink 800G-DR8 generated revenue of $128.4 million. OWS accuses the LumiLink 800G-DR8 of infringing all four Asserted Patents — the '847, '193, '562, and '015 Patents.
LumiEdge 1600G-LR. Lumicore launched the LumiEdge 1600G-LR transceiver module in the fourth quarter of 2023 — notably, after Lumicore had received two detailed licensing letters identifying OWS's Asserted Patents, after Lumicore had participated in an in-person licensing meeting with OWS representatives, and after Lumicore had affirmatively declined to take a license. In fiscal year 2023, the LumiEdge 1600G-LR generated revenue of $41.7 million. OWS accuses the LumiEdge 1600G-LR of infringing the '193 and '015 Patents.
In total, Lumicore's accused products generated $264.9 million in revenue in fiscal year 2023, and they are projected to generate approximately $714.6 million through the currently scheduled trial date of February 2, 2026.
[New Accused Product]. [Placeholder — to be completed upon triggering event. Description of the new product, its specifications, its targeted market, the date of announcement, and the basis for OWS's assertion that it incorporates the same infringing technology as the other accused products.]
OWS asserts literal infringement of all asserted claims of the Asserted Patents by the applicable accused products. Additionally, as to Claims 3 and 7 of the '193 Patent and Claim 12 of the '015 Patent, OWS asserts infringement under the doctrine of equivalents. OWS served its Infringement Contentions pursuant to Patent Rule 3-1 on September 16, 2024. See Ex. 13.
Independent physical teardown analyses of all three currently accused products were performed by Benchmark Semiconductor Analysis, LLC, located at 2244 Mission College Boulevard, Santa Clara, California 95054, under the direction of Lead Engineer Kevin Ng. The teardown of the LumiLink 400G-ZR+ was completed on December 12, 2022; the teardown of the LumiLink 800G-DR8 was completed in June 2023; and the teardown of the LumiEdge 1600G-LR was completed in February 2024. Each teardown confirmed the presence of structures and features in the accused products that correspond to the asserted claim limitations of the Asserted Patents. See Ng Decl. ¶¶ 5–32; Exs. 10–12.
D. Pre-Suit Notice and Willful Infringement
The evidence of Lumicore's willful infringement is extensive and spans more than two years of pre-suit interactions between the parties.
In October 2022, OWS's engineering team first identified potential infringement of the '847, '193, and '562 Patents by Lumicore's LumiLink 400G-ZR+ transceiver module. In November 2022, OWS retained Benchmark Semiconductor Analysis, LLC to perform a physical teardown of the LumiLink 400G-ZR+. On December 12, 2022, Benchmark delivered its teardown report, which confirmed the presence of waveguide multiplexer structures and thermal management micro-channels matching the features claimed in the '847, '193, and '562 Patents. See Ex. 10.
On January 15, 2023, FairPoint Licensing Group, LLC — OWS's licensing agent, located at 500 Sansome Street, Suite 1400, San Francisco, California 94111, under Managing Director Angela Reeves — sent a detailed licensing and notice letter to Raymond Bautista, General Counsel of Lumicore, identifying the '847, '193, and '562 Patents and requesting that Lumicore enter into a licensing agreement. See Reeves Decl. ¶¶ 4–8; Ex. 5.
On February 28, 2023, Lumicore responded through its outside counsel, Catherine "Kate" Rourke of Hawthorne Vega & Cruz LLP, disputing infringement and questioning the validity of the identified patents. See Ex. 6.
On April 20, 2023, an in-person licensing meeting was held in Austin, Texas, attended by Angela Reeves and Rebecca Tanaka on behalf of OWS and Raymond Bautista and Kate Rourke on behalf of Lumicore. No resolution was reached. Ms. Reeves attested in her deposition on December 10, 2024 that Lumicore's representatives showed "no interest in negotiating" a license and that the meeting was unproductive. See Reeves Decl. ¶¶ 9–14; Ex. 17.
On May 15, 2023, FairPoint sent a second licensing letter to Lumicore, adding the '015 Patent (which had issued on August 2, 2022) and expanding the scope of accused products to include the LumiLink 800G-DR8. See Ex. 7.
On July 10, 2023, Lumicore formally declined to take a license, stating through counsel that it had obtained "competent legal opinions" that its products did not infringe OWS's patents. Lumicore refused to produce those opinions, asserting attorney-client privilege. See Ex. 8. OWS's Motion to Compel production of the opinion-of-counsel letters remains pending before this Court. See D.E. 38.
Despite this comprehensive notice, in the fourth quarter of 2023, Lumicore proceeded to launch the LumiEdge 1600G-LR module — a new product incorporating the same infringing silicon-photonics technology.
The evidence of willfulness extends beyond the pre-suit licensing correspondence. Former Lumicore engineer Melissa Chen, now employed by Veridian Photonics, Inc., has provided testimony that Lumicore's LumiLink 400G-ZR+ design team reviewed OWS's published patent applications — specifically Published Application No. 2018/0123456, corresponding to the '193 Patent — during the product design phase in 2021 and 2022. Dr. Sandra Michaud, Lumicore's Chief Technology Officer, admitted in her deposition on November 19, 2024 that she personally reviewed OWS's published application during the LumiLink design phase. See Ex. 15 (Michaud Dep. Tr.). Raymond Bautista, Lumicore's General Counsel, confirmed in his deposition on December 3, 2024 that he received FairPoint's January 15, 2023 letter and admitted that no formal design-around analysis was commissioned before the launch of the LumiEdge 1600G-LR. See Ex. 16 (Bautista Dep. Tr.).
This evidence demonstrates a pattern of deliberate infringement: Lumicore designed its products with knowledge of OWS's patent rights, received detailed written notice identifying the specific patents and the specific products at issue, refused to negotiate a license, failed to commission a design-around analysis, and proceeded to launch additional infringing products. This is precisely the type of willful, "copy first, ask questions later" conduct that warrants injunctive relief.
E. Procedural History
This action was filed on April 22, 2024. The procedural history is as follows:
• April 22, 2024: OWS filed its Original Complaint (D.E. 1), asserting seven counts: four counts of direct patent infringement (one per Asserted Patent), one count of induced infringement, one count of contributory infringement, and one count of willful infringement seeking enhanced damages under 35 U.S.C. § 284.
• June 17, 2024: Lumicore filed its Answer and Counterclaims (D.E. 12), asserting defenses of non-infringement, invalidity under 35 U.S.C. §§ 102 and 103, unenforceability based on alleged inequitable conduct, and a counterclaim for declaratory judgment of non-infringement. Lumicore also filed a Motion to Transfer Venue to the Western District of Texas (D.E. 13).
• August 5, 2024: Judge Gilstrap denied Lumicore's Motion to Transfer (D.E. 25), finding that the Eastern District of Texas is a proper and convenient venue for this action.
• August 12, 2024: The Court issued its Scheduling Order (D.E. 27), establishing the following key dates: Markman hearing on March 14, 2025; jury trial on February 2, 2026. See Ex. 23.
• September 16, 2024: OWS served its Infringement Contentions (D.E. 32) pursuant to Patent Rule 3-1.
• October 14, 2024: Lumicore served its Invalidity Contentions (D.E. 36) pursuant to Patent Rule 3-3.
• October 28, 2024: The parties filed their Joint Claim Construction Statement (D.E. 40), identifying fourteen disputed claim terms.
• November 15, 2024: OWS filed its Opening Claim Construction Brief (D.E. 44).
• December 6, 2024: Lumicore filed its Responsive Claim Construction Brief (D.E. 48).
• December 20, 2024: OWS filed its Reply Claim Construction Brief (D.E. 52).
• January 10, 2025: Lumicore filed its Sur-Reply Claim Construction Brief (D.E. 56).
• January 15, 2025: The parties filed their Joint Claim Construction Chart (final) (D.E. 58).
• March 14, 2025: Markman hearing (scheduled).
The remaining schedule provides for the close of fact discovery on May 1, 2025; plaintiff's expert reports due June 15, 2025; defendant's rebuttal expert reports due July 15, 2025; close of expert discovery on August 15, 2025; dispositive motions due September 15, 2025; Daubert motions due November 1, 2025; pre-trial conference on January 5, 2026; and jury trial commencing February 2, 2026.
Discovery in this action has been extensive. OWS has produced approximately 182,000 documents comprising approximately 1.4 million pages. Lumicore has produced approximately 147,000 documents comprising approximately 980,000 pages. A three-tier confidentiality order is in place, encompassing designations of "Confidential," "Highly Confidential — Attorneys' Eyes Only," and "Highly Confidential — Source Code."
The following depositions have been completed: Dr. Jian-Wei Huang, OWS Chief Technology Officer (November 5, 2024); Dr. Sandra Michaud, Lumicore Chief Technology Officer (November 19, 2024); Raymond Bautista, Lumicore General Counsel (December 3, 2024, limited due to privilege issues); Angela Reeves, FairPoint Licensing Group Managing Director (December 10, 2024); and Kevin Ng, Benchmark Semiconductor Analysis Lead Engineer (January 7, 2025).
OWS's Motion to Compel production of the opinion-of-counsel letters referenced in Lumicore's July 10, 2023 declination letter remains pending before this Court (D.E. 38).
F. The Triggering Event
[Placeholder — This section will be completed in full upon the occurrence of the triggering event. The section will describe the nature of the new product announcement or major customer win by Lumicore; explain in detail how the triggering event expands the scope of infringement and accelerates irreparable harm to OWS; provide the date and circumstances of the announcement; identify the new product by name, specifications, and targeted market; describe the customer(s) involved, if applicable; and detail the urgency requiring emergency relief, including the time-sensitive nature of design-in decisions and the competitive consequences of delay.]
III. LEGAL STANDARD
The issuance of a temporary restraining order and a preliminary injunction is governed by Federal Rule of Civil Procedure 65(a) and (b). In patent cases, the movant must demonstrate four factors: (1) a likelihood of success on the merits; (2) that the movant will suffer irreparable harm if injunctive relief is not granted; (3) that the balance of hardships tips in favor of the movant; and (4) that the public interest favors the issuance of injunctive relief.
In Northgate Group v. MercExchange, L.L.C., 547 U.S. 388 (2006), the Supreme Court held that the traditional four-factor test for equitable relief applies in patent cases, and that neither a categorical rule in favor of nor against injunctive relief is appropriate. While Cascade Holdings addressed the standard for permanent injunctions following a finding of infringement, the Federal Circuit has applied the same equitable framework to motions for preliminary injunctions in patent cases. See Robert Bosch LLC v. Pylon Mfg. Corp., 659 F.3d 1142, 1148–49 (Fed. Cir. 2011) (applying the four-factor Cascade Holdings framework to preliminary injunctions and holding that "the framework set out in Cascade Holdings applies to preliminary injunctions" in patent cases).
The Federal Circuit has further elaborated on the irreparable harm requirement, holding that a patent holder seeking a preliminary injunction must demonstrate a "causal nexus" between the alleged infringement and the claimed irreparable harm. Camberwell & Co. v. Northgate & Co. Elecs. Co., 695 F.3d 1370, 1374 (Fed. Cir. 2012). In Tidewater Industries, the Federal Circuit explained that the patent holder must show that the infringing features of the accused product are the features that drive consumer demand, such that the infringement — as opposed to other, non-infringing features — is the cause of the irreparable harm.
While the Federal Circuit has stated that a "clear showing" on each factor is required, no single factor is dispositive. See Robert Bosch, 659 F.3d at 1149. The court must weigh and consider all four factors in determining whether preliminary injunctive relief is warranted. The decision to grant or deny a preliminary injunction in a patent case is committed to the sound discretion of the district court, subject to review by the Federal Circuit for abuse of discretion. Id.
The standard for a temporary restraining order is substantially the same as for a preliminary injunction, with the additional requirement that the movant must demonstrate that immediate and irreparable injury will result before the adverse party can be heard in opposition. Fed. R. Civ. P. 65(b)(1)(A).
IV. ARGUMENT
A. OWS Is Likely to Succeed on the Merits
1. OWS Is Likely to Prove Infringement. OWS's infringement case is strong, well-developed, and supported by compelling physical evidence, expert analysis, and admissions from Lumicore's own officers.
Benchmark Semiconductor Analysis, LLC, under the direction of Lead Engineer Kevin Ng, performed independent physical teardown analyses of all three currently accused Lumicore products. These teardowns — conducted on December 12, 2022 (LumiLink 400G-ZR+), in June 2023 (LumiLink 800G-DR8), and in February 2024 (LumiEdge 1600G-LR) — confirmed the presence of structures and features in each accused product that correspond to the asserted claim limitations of the Asserted Patents. Mr. Ng's methodology, chain of custody, and findings are set forth in detail in his declaration. See Ng Decl. ¶¶ 5–32; Exs. 10–12.
The '847 Patent (Claims 1, 3, 5, 9, and 14). The teardowns of the LumiLink 400G-ZR+ and LumiLink 800G-DR8 each revealed multi-channel silicon photonic waveguide multiplexer structures that exhibit the low insertion loss characteristics claimed in the '847 Patent. The waveguide multiplexer architectures identified in the teardowns are structurally consistent with the claim limitations of Claims 1, 3, 5, 9, and 14 of the '847 Patent. Mr. Ng's element-by-element mapping, corroborated by scanning electron microscope ("SEM") imaging and optical characterization data, demonstrates that each limitation of the asserted claims is met by the corresponding structure in the accused products. See Ng Decl. ¶¶ 10–17; Ashford Decl. ¶¶ 22–38; Ex. 14.
The '193 Patent (Claims 1, 3, 7, 10, 15, and 18). All three accused products — the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR — contain high-bandwidth coherent optical transceiver components integrated on a silicon substrate that match the claimed architecture of the '193 Patent. The integration approach, signal-processing architecture, and silicon-substrate implementation identified through teardown and design-file analysis correspond to the limitations of Claims 1, 3, 7, 10, 15, and 18. As to Claims 3 and 7, OWS additionally asserts infringement under the doctrine of equivalents, supported by a function-way-result analysis demonstrating that the accused structures perform substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed elements. See Ashford Decl. ¶¶ 39–65; Ex. 14.
The '562 Patent (Claims 1, 4, 6, and 11). The LumiLink 400G-ZR+ and LumiLink 800G-DR8 contain embedded micro-channel heat sink structures that are identical in design principle and dimensional characteristics to the patented thermal management method claimed in the '562 Patent. Cross-sectional SEM imaging of the accused products reveals micro-channel architectures with the specific dimensional and structural characteristics recited in Claims 1, 4, 6, and 11 of the '562 Patent. See Ng Decl. ¶¶ 18–24; Ashford Decl. ¶¶ 66–82; Ex. 14.
The '015 Patent (Claims 1, 5, 8, 12, and 16). The LumiLink 800G-DR8 and LumiEdge 1600G-LR incorporate polarization-diverse grating coupler structures that correspond to the claimed structures of the '015 Patent. The grating coupler designs identified through teardown analysis exhibit the polarization-diversity characteristics recited in Claims 1, 5, 8, 12, and 16. As to Claim 12, OWS additionally asserts infringement under the doctrine of equivalents. See Ng Decl. ¶¶ 25–32; Ashford Decl. ¶¶ 83–98; Ex. 14.
The evidence of infringement is further bolstered by Dr. Sandra Michaud's deposition testimony. On November 19, 2024, Lumicore's Chief Technology Officer testified under oath that she could not identify specific non-infringing design alternatives for the accused products when questioned about the relevant patented features. See Ex. 15 (Michaud Dep. Tr. at 147:3–149:22). This admission is highly significant: the inability of the defendant's own CTO to identify design-around alternatives underscores both the strength of OWS's infringement case and the centrality of the patented technology to the accused products.
Additionally, Lumicore design files produced in discovery — designated as Highly Confidential — Source Code under the Court's protective order — further corroborate the element-by-element mapping set forth in OWS's infringement contentions and in the expert analyses of Dr. Ashford and Mr. Ng.
[Reference to the new accused product: Upon the triggering event, this section will be supplemented with an analysis of the [New Accused Product], explaining how the same infringing technology identified in the existing accused products appears in the new product, and describing any additional teardown or preliminary analysis conducted by Benchmark Semiconductor Analysis.]
Dr. Caroline Ashford, Professor of Electrical Engineering and Photonics at the Northfield Institute of Technology in Evanston, Illinois, has been retained as OWS's technical expert. Dr. Ashford has provided a detailed declaration, attached hereto, in which she opines that each accused product infringes each asserted claim of each applicable Asserted Patent. Dr. Ashford's opinions are based on her review of the Benchmark teardown reports, the design files produced in discovery, the relevant prior art, and the prosecution histories of the Asserted Patents. See Ashford Decl. ¶¶ 1–115.
2. Lumicore's Validity Defenses Are Unlikely to Succeed. Lumicore's invalidity contentions, served on October 14, 2024, cite a total of twenty-three prior-art references across the four Asserted Patents. OWS has carefully analyzed each of these references and submits that none, individually or in combination, renders any asserted claim invalid.
The '847 Patent. Lumicore's principal invalidity reference for the '847 Patent is Takahashi et al., "Dense WDM Silicon Photonic MUX," published in IEEE Photonics Technology Letters in March 2014. The Takahashi reference describes a wavelength-division multiplexing structure on a silicon photonic platform, but it fails to disclose the multi-channel waveguide multiplexer architecture with the specific low-insertion-loss characteristics claimed in the '847 Patent. The Takahashi system employs a different waveguide geometry and coupling approach that does not achieve the claimed insertion-loss performance. The structural and performance distinctions between the Takahashi reference and the '847 Patent claims are set forth in detail in Dr. Ashford's declaration. See Ashford Decl. ¶¶ 99–104. The Takahashi reference does not anticipate the '847 Patent claims, and Lumicore's obviousness theories based on combinations including Takahashi lack the requisite motivation to combine and fail to account for the specific structural features that distinguish the '847 Patent.
The '562 Patent. Lumicore relies on the Bergmann patent (U.S. Patent No. 8,412,007, issued April 2, 2013) and Dr. Li Wei's conference paper ("Thermal Solutions for PICs," presented at OFC 2013 in March 2013) to challenge the validity of the '562 Patent. Neither reference, individually or in combination, renders the '562 claims obvious. The Bergmann patent discloses heat-sink structures for electronic — not photonic — integrated circuits, and lacks the embedded micro-channel heat sink architecture with the specific dimensional and structural characteristics recited in the '562 claims. Dr. Wei's conference paper provides a general overview of thermal management approaches but does not disclose the claimed micro-channel dimensions, materials, or integration methods. See Ashford Decl. ¶¶ 105–110.
The '015 Patent. In addition to prior-art references, Lumicore has asserted a prior-conception defense based on internal design documents allegedly dated 2016 through 2017. However, this defense fails for at least two reasons. First, the internal documents lack the requisite independent corroboration to establish a date of conception prior to the '015 Patent's priority date, which extends back through Provisional Application No. 62/499,117 filed on April 7, 2017. Second, even accepting the purported dates at face value, several of the documents post-date the filing date of the provisional application and therefore cannot serve as prior art. See Ashford Decl. ¶¶ 111–115.
Inequitable Conduct. Lumicore's inequitable conduct counterclaim alleges that Dr. Jian-Wei Huang, OWS's CTO and a named inventor on the '193 Patent, failed to disclose a prior publication during prosecution of the '193 Patent. This defense is weak. The allegedly withheld reference is cumulative of prior art that was already cited by the patent examiner during prosecution. Under well-established Federal Circuit precedent, the failure to disclose a cumulative reference does not establish the materiality required for inequitable conduct. Moreover, Lumicore cannot establish the requisite specific intent to deceive — the "single most reasonable inference" standard articulated in Brightmoor & Co., Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc) — because the record shows no affirmative act of concealment and no credible motive to withhold a reference that adds nothing to the prior art already before the examiner.
Secondary Considerations. The secondary considerations of nonobviousness strongly favor OWS. First, commercial success: approximately $310 million of OWS's FY 2023 revenue of $487.3 million is attributable to products that practice the Asserted Patents, demonstrating the substantial commercial value of the patented innovations. Second, long-felt need: the industry had long sought low-insertion-loss waveguide multiplexing solutions for high-density silicon-photonics applications, and OWS's inventions addressed this need. Third, failure of others: at least three competitors attempted similar designs before OWS's innovations, but none achieved the performance and integration advantages claimed in the Asserted Patents. Fourth, copying: the deposition testimony of Dr. Michaud and the anticipated testimony of former Lumicore engineer Melissa Chen establish that Lumicore's design team reviewed OWS's published patent applications and developed products that employ the same technological approaches.
Finally, it is significant that no IPR petitions have been filed as to any of the Asserted Patents. Under 35 U.S.C. § 315(b), Lumicore's one-year time bar for filing an IPR petition runs on May 1, 2025 (one year from service of the complaint). The absence of an IPR filing to date further supports the strength of the Asserted Patents.
3. OWS Is Likely to Prove Willful Infringement. The evidence of willfulness is not merely sufficient — it is compelling, and it independently supports the need for injunctive relief by demonstrating that Lumicore will continue to expand its infringing activities unless restrained by this Court.
FairPoint's January 15, 2023 letter placed Lumicore on actual notice of the '847, '193, and '562 Patents and identified the specific Lumicore product accused of infringement. The May 15, 2023 supplemental letter expanded the scope of notice to include the '015 Patent and the LumiLink 800G-DR8. Despite this notice — and despite an in-person licensing meeting at which OWS's representatives made a good-faith effort to resolve the dispute through a license — Lumicore refused to negotiate, refused to take a license, and proceeded to launch the LumiEdge 1600G-LR in the fourth quarter of 2023.
Lumicore referenced "competent legal opinions" in its July 10, 2023 declination letter, but has refused to produce those opinions, asserting privilege. The refusal to disclose allegedly exonerating legal opinions, when coupled with Lumicore's continued and expanding infringement, permits the inference that the opinions are either non-existent or unfavorable. OWS's motion to compel production of these opinions remains pending before this Court (D.E. 38).
Dr. Sandra Michaud, Lumicore's CTO, admitted under oath that she reviewed OWS's Published Application No. 2018/0123456 — the published version of the application that matured into the '193 Patent — during the design phase of the LumiLink product line. See Ex. 15. Raymond Bautista, Lumicore's General Counsel, admitted under oath that he received the FairPoint licensing letters and that no formal design-around analysis was commissioned before the launch of the LumiEdge 1600G-LR. See Ex. 16. And former Lumicore engineer Melissa Chen has provided testimony establishing that Lumicore's design team accessed OWS's published patent applications in 2021 and 2022 during the product development process.
[Upon the triggering event, this section will be supplemented with a discussion of the new product launch as a continuation of Lumicore's pattern of willful disregard for OWS's patent rights.]
This record of deliberate infringement, conducted with knowledge of OWS's patents and in defiance of specific notice, demonstrates that Lumicore will not voluntarily cease its infringing activities. Injunctive relief is necessary to prevent further harm.
B. OWS Will Suffer Irreparable Harm Absent Injunctive Relief
1. Direct Competition and Market Erosion. OWS and Lumicore are direct competitors in the silicon-photonics transceiver module market for hyperscale data centers. This is not a case where the patent holder and the alleged infringer operate in separate market segments or serve different customer bases. To the contrary, OWS and Lumicore compete head-to-head at twelve of the top twenty hyperscale data-center operators, and seven major hyperscale customers purchase transceiver modules from both companies. OWS's key products — the OWS-400ZR, OWS-800XR, and OWS-1600DR — directly compete with each of Lumicore's accused product lines for the same purchase orders, the same design-in opportunities, and the same long-term customer relationships. See Whitfield Decl. ¶¶ 14–22; Ex. 22.
The competitive dynamics of the hyperscale data-center transceiver market make the irreparable harm from Lumicore's infringement particularly acute. In this market, the "design-in" is the critical event. When a hyperscale data-center operator selects a transceiver module for deployment in a new data-center build or infrastructure refresh, that design-in typically locks in the selected vendor for a period of three to five years. The design-in process involves extensive qualification testing, integration with the customer's networking infrastructure, and deployment planning. Once a customer completes this process with a particular vendor's product, switching to an alternative vendor is prohibitively costly and disruptive. As a result, lost design-in opportunities are effectively permanent — they cannot be recaptured through monetary damages. See Huang Decl. ¶¶ 20–28; Whitfield Decl. ¶¶ 23–31.
OWS has compiled specific evidence of customer diversion attributable to Lumicore's accused products. The Declaration of Karen Whitfield, OWS's Vice President of Sales, together with declarations from three regional sales directors, identifies specific instances in which OWS has lost design-in opportunities to Lumicore's infringing products and instances in which customers have indicated an intent to switch from OWS to Lumicore for their next generation of transceiver deployments. See Whitfield Decl. ¶¶ 32–48.
2. Price Erosion. The average selling price ("ASP") of 400G-ZR transceiver modules declined by 18.7% from the third quarter of 2022 — the quarter in which Lumicore launched the LumiLink 400G-ZR+ — through the fourth quarter of 2023. See Ex. 19. OWS attributes a significant portion of this price erosion to Lumicore's market entry with infringing products sold at aggressively low pricing. When a competitor enters the market with infringing products, free from the burden of licensing costs or the substantial R&D investments required to develop non-infringing alternatives, that competitor can undercut the innovator's pricing and drive down prices industry-wide.
Price erosion is a paradigmatic form of irreparable harm in patent cases precisely because it is difficult to quantify with precision and cannot be fully compensated by monetary damages. Once prices are driven down across the market, they do not recover to their pre-infringement levels. The downward price pressure created by Lumicore's infringing products affects not only OWS's sales to customers who have been diverted to Lumicore but also OWS's sales to customers who remain with OWS but demand lower prices in response to the competitive pressure created by Lumicore's offerings.
Gregory Falk, an independent industry consultant and former Vice President of Engineering at Solara Optics, Inc., has analyzed the competitive dynamics of the silicon-photonics transceiver market and the price erosion attributable to Lumicore's entry with infringing products. Mr. Falk will opine that the price erosion is directly linked to Lumicore's market presence and that it cannot be fully remedied by monetary damages. See Falk Decl. ¶¶ 12–28.
3. Loss of Goodwill, Customer Relationships, and Market Position. OWS is the third-largest U.S. supplier of silicon-photonics transceiver modules for hyperscale data centers. Lumicore's rapid growth — fueled in significant part by its accused products — threatens OWS's competitive position in this strategically important market. Lumicore's FY 2023 accused-product revenue of $264.9 million represents a significant and growing share of the market, and each new product launch and customer win by Lumicore compounds the harm to OWS by further entrenching Lumicore's infringing technology in customer deployments.
The loss of customer relationships and brand reputation in the hyperscale data-center market is particularly difficult to quantify and remedy. Customer relationships in this market are built over years of collaborative engagement, technical support, and proven product performance. Once a customer shifts its purchasing to a competitor, the relationship is damaged in ways that cannot be captured by a monetary award. See Whitfield Decl. ¶¶ 49–58.
Each new product launch by Lumicore, including the triggering product at issue in this motion, compounds the irreparable harm by establishing Lumicore's infringing technology in additional customer deployments and further eroding OWS's market position and customer relationships.
4. Monetary Damages Cannot Fully Compensate OWS. While OWS seeks approximately $210 million in damages in this action, monetary relief alone is inadequate to compensate for the competitive harm caused by Lumicore's infringement. The inadequacy of monetary damages arises from several independent factors:
Lost design-in opportunities cannot be recaptured. Design-in decisions in the hyperscale data-center market lock in vendors for three to five years. Monetary damages awarded at trial in February 2026 cannot undo the customer commitments made during the pendency of this litigation.
Price erosion is industry-wide and permanent. Once prices are driven down by the competitive pressure of infringing products, they do not recover. A damages award cannot restore the pricing levels that prevailed before Lumicore's entry.
Loss of market position and goodwill are not quantifiable. OWS's competitive standing, customer relationships, and brand reputation are intangible assets that defy precise monetary valuation.
Lumicore continues to gain customers and market share with each passing day. The harm to OWS is not static — it compounds over time as Lumicore wins additional design-ins, expands its customer base, and further entrenches its infringing products in the market.
Importantly, OWS is a practicing entity — not a non-practicing entity. OWS practices the Asserted Patents through its own commercial products and competes directly with Lumicore's accused products. The Federal Circuit has recognized that practicing entities face irreparable harm from infringement that is qualitatively different from, and more severe than, the harm to non-practicing entities. See Robert Bosch, 659 F.3d at 1153.
5. The Triggering Event Accelerates Irreparable Harm. [Placeholder — This subsection will be completed upon the occurrence of the triggering event. It will provide a specific discussion of how the new product announcement or major customer win creates heightened, imminent irreparable harm that cannot wait until the February 2, 2026 trial date. The discussion will address the specific competitive threat posed by the triggering event, the time-sensitive nature of the design-in decisions at stake, the projected revenue and market-share impact, and the acceleration of harm that warrants emergency relief.]
C. The Balance of Hardships Favors OWS
The balance of hardships tilts decidedly in favor of OWS.
Hardship to OWS absent injunctive relief. As detailed above, OWS faces continued and accelerating loss of market share, customer relationships, design-in opportunities, and pricing power. OWS is a company with $487.3 million in FY 2023 revenue and approximately 1,250 employees whose livelihoods depend on OWS's ability to compete effectively in the market. The harm to OWS is ongoing, compounding, and will be substantially irreversible by the time this case reaches trial on February 2, 2026.
Hardship to Lumicore if injunctive relief is granted. OWS acknowledges that an injunction would impose costs on Lumicore. Lumicore has indicated in discovery that a redesign of its accused products to avoid the Asserted Patents would take approximately eighteen to twenty-four months. Additionally, approximately 42% of Lumicore's product revenue is attributable to the accused products.
However, the hardship to Lumicore must be weighed in light of the full circumstances. Several factors diminish the weight of Lumicore's claimed hardship:
First, Lumicore brought this hardship upon itself through its deliberate decision to design, launch, and expand infringing product lines after receiving actual notice of OWS's patent rights. A party that knowingly infringes another's patents and then claims hardship from the consequences of that infringement is entitled to limited sympathy. See Robert Bosch, 659 F.3d at 1155 ("One who elects to build a business on a product found to infringe cannot be heard to complain if an injunction against continuing infringement destroys the business so elected.").
Second, Lumicore is a publicly traded company with a market capitalization of approximately $3.4 billion and FY 2023 revenue of approximately $312.6 million. Lumicore has the financial resources to pursue non-infringing design alternatives, as it should have done upon receiving OWS's licensing notices in 2023.
Third, Lumicore retains the remaining approximately 58% of its product revenue from non-accused products. An injunction limited to the accused products would not shut down Lumicore's business; it would simply require Lumicore to compete with non-infringing products.
The balance tips further in OWS's favor given the strong evidence of willful infringement. When a defendant has deliberately infringed with knowledge of the patent holder's rights, the balance of hardships should weigh more heavily against the infringer. See id.
OWS is willing to post a reasonable bond, as discussed below, to protect Lumicore against any wrongful injunction.
D. The Public Interest Favors Injunctive Relief
The public interest strongly favors the issuance of injunctive relief in this case. Strong patent rights incentivize the kind of innovation and R&D investment that OWS has made in developing the silicon-photonics technologies at issue — technologies that are critical to the data-center infrastructure upon which the digital economy depends. OWS has invested hundreds of millions of dollars in research and development, has built a patent portfolio of 142 issued U.S. patents and 58 pending applications, and has commercialized its innovations through products that serve the needs of hyperscale data-center operators worldwide.
The public interest is served by enforcing valid patents against willful infringers. The patent system exists to incentivize innovation by granting inventors a limited monopoly in exchange for public disclosure. When a competitor copies a patented invention, receives actual notice of the infringement, refuses to take a license, and continues to expand its infringing activities, the public interest demands that the courts enforce the patent holder's rights through injunctive relief.
Equally important, there are non-infringing alternatives available in the market from other suppliers. An injunction against Lumicore will not deprive data-center operators of access to transceiver modules. Other qualified suppliers, including OWS itself, stand ready to serve the market's needs.
Permitting Lumicore to continue infringing pending trial would undermine the patent system and send a message that companies can pursue a strategy of deliberate infringement with impunity — "copy first, ask questions later" — confident that they will face, at most, a damages award years after the harm has been inflicted. The public interest is not served by such an outcome.
V. BOND UNDER RULE 65(c)
OWS acknowledges that Federal Rule of Civil Procedure 65(c) requires that a temporary restraining order or preliminary injunction shall not issue except upon the giving of security by the applicant "in an amount that the court considers proper, for the payment of such costs and damages as may be incurred or suffered by any party who is found to have been wrongfully enjoined or restrained."
OWS is prepared to post a bond in an amount to be set by the Court. Heritage National Surety Co. has been identified as a potential surety for the injunction bond, and OWS has made preliminary arrangements for the issuance of a surety bond.
OWS respectfully submits that the bond amount should reflect Lumicore's actual provable damages from the injunction during the TRO and preliminary injunction period, rather than the total accused-product revenue. The bond is intended to compensate for the costs and damages that would result if the injunction is later found to have been wrongful — not to provide a guarantee of Lumicore's full revenue stream.
OWS's financial condition amply supports its ability to post a substantial bond. In fiscal year 2023, OWS reported revenue of $487.3 million and net income of $61.4 million. OWS maintains a revolving credit facility of $125 million with Weston Fidelity Bank, N.A. OWS is majority-owned by Ridgeline Capital Partners, LP, which acquired its 55% stake for $780 million. In addition, OWS maintains litigation cost insurance through Pacific Rim Insurance Group under Policy No. PLI-2023-08812.
VI. CONCLUSION AND PRAYER FOR RELIEF
For the foregoing reasons, Plaintiff Optiwave Semiconductor Corp. respectfully requests that the Court:
1. Issue a temporary restraining order effective immediately upon entry, enjoining Defendant Lumicore Technologies, Inc., its officers, agents, servants, employees, attorneys, and all persons in active concert or participation with Lumicore, from making, using, selling, offering to sell, or importing into the United States the LumiLink 400G-ZR+, LumiLink 800G-DR8, LumiEdge 1600G-LR, [New Accused Product], and any colorable imitations thereof;
2. Set a hearing on OWS's motion for preliminary injunction on an expedited schedule, within fourteen days of entry of the temporary restraining order;
3. Enter a preliminary injunction maintaining the status quo and continuing the injunctive relief through trial;
4. Set the bond amount in an amount to be determined by the Court; and
5. Grant such other and further relief as the Court deems just and proper.
Respectfully submitted,
CALDERWOOD & HARKNESS LLP
By: ________
Alan Ngo (CA Bar No. __) Admitted Pro Hac Vice 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-1800
Email: ango@calderwoodharkness.com
Marcus Delgado (TX Bar No. __) 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-1800
Email: mdelgado@calderwoodharkness.com
Wendy Schultz (CA Bar No. __) Admitted Pro Hac Vice 1201 F Street NW, Suite 700 Washington, DC 20004 Telephone: (202) 555-2400
Email: wschultz@calderwoodharkness.com
Omar Siddiqui (CA Bar No. __) Admitted Pro Hac Vice 1201 F Street NW, Suite 700 Washington, DC 20004 Telephone: (202) 555-2400
Email: osiddiqui@calderwoodharkness.com
Attorneys for Plaintiff Optiwave Semiconductor Corp.
WHITMORE & CALLAHAN LLP
By: ________
James "Jim" Callahan (TX Bar No. __) 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 555-4100
Email: jcallahan@whitmorecallahan.com
Local Counsel for Plaintiff Optiwave Semiconductor Corp.
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
Hon. James R. Gilstrap
[PROPOSED] ORDER GRANTING PLAINTIFF'S MOTION FOR TEMPORARY RESTRAINING ORDER
The Court, having considered Plaintiff Optiwave Semiconductor Corp.'s Emergency Motion for Temporary Restraining Order and Preliminary Injunction (D.E. _), the supporting Memorandum of Points and Authorities, the Declarations of Dr. Jian-Wei Huang, Rebecca Tanaka, Kevin Ng, Dr. Caroline Ashford, Karen Whitfield, Gregory Falk, Angela Reeves, and Alan Ngo, the Exhibits attached thereto, and for good cause shown, hereby ORDERS as follows:
FINDINGS
The Court finds that Plaintiff Optiwave Semiconductor Corp. has demonstrated:
1. A likelihood of success on the merits of its claims that Defendant Lumicore Technologies, Inc.'s LumiLink 400G-ZR+, LumiLink 800G-DR8, LumiEdge 1600G-LR, and [New Accused Product] transceiver modules infringe one or more claims of U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015;
2. That Plaintiff will suffer irreparable harm absent a temporary restraining order, including but not limited to loss of market share, customer diversion, erosion of design-in opportunities, price erosion, and damage to goodwill and competitive position;
3. That the balance of hardships tips in favor of Plaintiff, considering the evidence of Defendant's willful infringement after receiving actual notice of Plaintiff's patent rights and the availability of non-accused product lines constituting approximately 58% of Defendant's revenue; and
4. That the public interest favors granting the temporary restraining order, as enforcement of valid patent rights incentivizes innovation and non-infringing alternatives remain available in the market.
ORDER
IT IS HEREBY ORDERED that Defendant Lumicore Technologies, Inc., its officers (including, without limitation, Chief Executive Officer Thomas "Tom" 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), agents, servants, employees, attorneys, and all persons in ac

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

OPTIWAVE SEMICONDUCTOR CORP.,

LUMICORE TECHNOLOGIES, INC.,

NOTICE OF MOTION

TO THE COURT AND ALL PARTIES AND THEIR ATTORNEYS OF RECORD:

I. INTRODUCTION

II. STATEMENT OF FACTS

III. LEGAL STANDARD

IV. ARGUMENT

VI. CONCLUSION AND PRAYER FOR RELIEF

CALDERWOOD & HARKNESS LLP

WHITMORE & CALLAHAN LLP

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

OPTIWAVE SEMICONDUCTOR CORP.,

LUMICORE TECHNOLOGIES, INC.,

FINDINGS

Record

Parties

Dates

Amounts