JS 44 (Rev. 04/21) — CIVIL COVER SHEET
The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
United States District Court for the Eastern District of Texas
Date Filed: April 22, 2024
I. (a) PLAINTIFFS
Optiwave Semiconductor Corp. 4810 Bayside Technology Parkway, Suite 300 Santa Clara, CA 95054
County of Residence of First Listed Plaintiff: Santa Clara County, California (EXCEPT IN U.S. PLAINTIFF CASES)
State of Incorporation (For Diversity Cases Only): Delaware
NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE TRACT OF LAND INVOLVED.
I. (b) DEFENDANTS
Lumicore Technologies, Inc. 9200 Spectrum Boulevard, Building C Austin, TX 78759
County of Residence of First Listed Defendant: Travis County, Texas (IN U.S. PLAINTIFF CASES ONLY)
State of Incorporation (For Diversity Cases Only): Delaware
NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE TRACT OF LAND INVOLVED.
I. (c) ATTORNEYS (FIRM NAME, ADDRESS, AND TELEPHONE NUMBER)
Attorneys for Plaintiff:
Alan Ngo (admitted pro hac vice, E.D. Tex.; California State Bar No. 287614) Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 Telephone: (213) 443-7200 Facsimile: (213) 443-7201
Email: ango@calderwoodharkness.com
James "Jim" Callahan (Texas State Bar No. 03851249) Whitmore & Callahan LLP 110 North College Avenue, Suite 800 Tyler, TX 75702 Telephone: (903) 526-8400 Facsimile: (903) 526-8401
Email: jcallahan@whitmorecallahan.com
Local Counsel for Plaintiff Optiwave Semiconductor Corp.
Attorneys for Defendant:
(Not yet known at time of filing)
II. BASIS OF JURISDICTION
(Place an "X" in One Box Only)
Selection: 3. Federal Question (U.S. Government Not a Party)
Jurisdiction arises under 28 U.S.C. § 1331 (federal question) and 28 U.S.C. § 1338(a) (original jurisdiction over civil actions arising under any Act of Congress relating to patents). The claims in this action are brought under the Patent Act, 35 U.S.C. §§ 271, 281, 283, 284, and 285, and therefore present a federal question over which this Court has exclusive subject-matter jurisdiction.
III. CITIZENSHIP OF PRINCIPAL PARTIES
(For Diversity Cases Only — Place an "X" in One box for Plaintiff and One box for Defendant)
This section is formally inapplicable as jurisdiction is based on Federal Question (Box 3), not Diversity of Citizenship (Box 4). The following information is provided solely for completeness and for the convenience of the Clerk of Court.
For informational purposes only:
• Plaintiff Optiwave Semiconductor Corp. is incorporated in the State of Delaware and maintains its principal place of business in the State of California (Santa Clara County). For diversity purposes, it would be deemed a citizen of both Delaware and California.
• Defendant Lumicore Technologies, Inc. is incorporated in the State of Delaware and maintains its principal place of business in the State of Texas (Travis County). For diversity purposes, it would be deemed a citizen of both Delaware and Texas.
Both parties share Delaware as a state of incorporation; accordingly, complete diversity would not exist between the parties, further confirming that diversity jurisdiction under 28 U.S.C. § 1332 is unavailable and federal question jurisdiction under 28 U.S.C. § 1331 and § 1338(a) is the proper basis for this Court's jurisdiction.
IV. NATURE OF SUIT
(Place an "X" in One Box Only)
Click on the Nature of Suit Code description for a more detailed definition. Full listing of available Nature of Suit codes provided below for reference; only the applicable code is marked.
CONTRACT.
REAL PROPERTY.
TORTS — PERSONAL INJURY
TORTS — PERSONAL PROPERTY
FORFEITURE/PENALTY.
BANKRUPTCY.
PROPERTY RIGHTS.
LABOR.
SOCIAL SECURITY.
FEDERAL TAX SUITS
IMMIGRATION.
OTHER STATUTES.
V. ORIGIN
(Place an "X" in One Box Only)
This action is an original proceeding. The Complaint was filed for the first time in this Court. This action has not been previously filed in any other federal or state court, nor has it been removed, remanded, reinstated, reopened, or transferred from another district. This action is not part of any multidistrict litigation proceeding.
VI. CAUSE OF ACTION
(a) Cite the U.S. Civil Statute Under Which You Are Filing:
35 U.S.C. § 271 (Patent Infringement) 35 U.S.C. § 281 (Remedy for Infringement of Patent) 35 U.S.C. § 283 (Injunction) 35 U.S.C. § 284 (Damages) 35 U.S.C. § 285 (Attorney Fees — Exceptional Cases)
(b) Brief Description of Cause:
Patent infringement action. Plaintiff Optiwave Semiconductor Corp. alleges that Defendant Lumicore Technologies, Inc. has infringed, and continues to infringe, the following United States patents: U.S. Patent No. 10,234,847 ("Multi-Channel Silicon Photonic Modulator with Integrated Thermal Compensation"); U.S. Patent No. 10,891,193 ("High-Bandwidth Coherent Optical Transceiver Architecture with Adaptive Equalization"); U.S. Patent No. 9,678,562 ("Low-Power Electro-Absorption Modulated Laser Assembly for Data Center Interconnects"); and U.S. Patent No. 11,402,015 ("Dense Wavelength Division Multiplexing Transceiver Module with On-Chip Digital Signal Processing").
Defendant infringes these patents by making, using, selling, offering to sell, and/or importing into the United States its LumiLink 400G-ZR+ coherent transceiver modules, LumiLink 800G-DR8 short-reach transceiver modules, and LumiEdge 1600G-LR long-range transceiver module products, as well as components thereof, and by inducing and contributing to infringement by its customers, distributors, and end users.
The Complaint asserts seven counts: (1) direct infringement of U.S. Patent No. 10,234,847; (2) direct infringement of U.S. Patent No. 10,891,193; (3) direct infringement of U.S. Patent No. 9,678,562; (4) direct infringement of U.S. Patent No. 11,402,015; (5) induced infringement of all four patents-in-suit under 35 U.S.C. § 271(b); (6) contributory infringement of all four patents-in-suit under 35 U.S.C. § 271(c); and (7) willful infringement of all four patents-in-suit.
Plaintiff seeks compensatory damages in an amount no less than approximately $210,000,000 (two hundred ten million dollars), representing lost profits and/or a reasonable royalty for Defendant's unauthorized use of the patented technologies, together with enhanced damages up to treble the amount of compensatory damages for willful infringement under 35 U.S.C. § 284, permanent injunctive relief under 35 U.S.C. § 283 to prevent Defendant's continuing infringement, pre-judgment and post-judgment interest, costs of suit, and attorneys' fees in the event the Court finds this to be an exceptional case under 35 U.S.C. § 285.
VII. REQUESTED IN COMPLAINT
(a) Check if This Is a Class Action Under Rule 23, F.R.Cv.P.
CLASS ACTION — Not applicable. This action is not brought as a class action under Federal Rule of Civil Procedure 23.
(b) DEMAND. $210,000,000.00
(Two Hundred Ten Million Dollars)
The demand amount comprises lost profits attributable to Defendant's infringing sales, a reasonable royalty for infringing uses not captured by lost profits, and enhanced damages for willful infringement. This amount does not include pre-judgment interest, post-judgment interest, costs of suit, or attorneys' fees, which are sought in addition to the stated demand.
(c) CHECK YES only if demanded in complaint:
JURY DEMAND: Yes
Plaintiff has demanded a trial by jury on all issues so triable in the Complaint, pursuant to the Seventh Amendment to the United States Constitution and Federal Rule of Civil Procedure 38(b).
VIII. RELATED CASE(S) IF ANY
(See instructions)
Plaintiff is not aware of any related cases previously filed in this district or in any other federal court that would require assignment to the same judge or coordination under the related-case rules of this Court. A diligent search of the records of this Court and PACER has been conducted, and no related pending or previously terminated actions have been identified involving the same patents-in-suit, the same parties, or substantially similar claims or factual allegations. Should Plaintiff become aware of any related case, Plaintiff will promptly file a notice of related case in accordance with the Local Rules of the Eastern District of Texas.
IX. DIVISIONAL ASSIGNMENT
(Civil Local Rule 3.2 — Place one "X" in the appropriate box)
marshall Division
Basis for Assignment to the marshall Division:
Defendant Lumicore Technologies, Inc. maintains a regular and established place of business within the Eastern District of Texas, including a sales office and technical support center located at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701. This facility is staffed by Defendant's full-time employees, who are engaged in the sale, promotion, technical support, and after-sale servicing of Defendant's accused products, including the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR transceiver module product lines.
Defendant has made, and continues to make, sales of the accused products to customers with significant operations and facilities located within this judicial district. Identified customers include, but are not limited to:
• Pinnacle Data Systems, LLC — data center operations located in Longview, Gregg County, Texas;
• Frontier Cloud Services, Inc. — regional headquarters and co-location facility located in marshall, Harrison County, Texas; and
• CrossPoint Networking Corp. — engineering and network operations center located in Plano, Collin County, Texas.
A substantial part of the events or omissions giving rise to the claims in this action occurred in this judicial district, including Defendant's sale and distribution of the accused infringing products and the use of such products by Defendant's customers within the district.
Venue Statute: 28 U.S.C. § 1400(b) — "Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business." Venue in the Eastern District of Texas is proper because Defendant has committed acts of infringement in this district and has a regular and established place of business in this district, as described above.
X. SIGNATURE OF ATTORNEY OF RECORD
/s/ Alan Ngo
Alan Ngo (California State Bar No. 287614) Admitted pro hac vice, Eastern District of Texas CALDERWOOD & HARKNESS LLP 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 Telephone: (213) 443-7200 Facsimile: (213) 443-7201
Email: ango@calderwoodharkness.com
Attorney for Plaintiff Optiwave Semiconductor Corp.
Date: April 22, 2024
James "Jim" Callahan (Texas State Bar No. 03851249) WHITMORE & CALLAHAN LLP 110 North College Avenue, Suite 800 Tyler, TX 75702 Telephone: (903) 526-8400 Facsimile: (903) 526-8401
Email: jcallahan@whitmorecallahan.com
Local Counsel for Plaintiff Optiwave Semiconductor Corp.
Date: April 22, 2024
XI. SUPPLEMENTAL INFORMATION
(For Use by the Clerk of Court Only)
XII. INSTRUCTIONS FOR ATTORNEYS
(Appearing on reverse side of form — provided here for reference)
AUTHORITY FOR CIVIL COVER SHEET. The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted with each civil complaint filed.
GENERAL INSTRUCTIONS. The civil cover sheet is to be completed by the plaintiff or plaintiff's attorney and submitted to the Clerk of Court at the time the complaint is filed. The information provided on this cover sheet will not be used for any purpose other than statistical reporting and internal record-keeping by the Clerk's Office and the Administrative Office of the United States Courts.
I. PLAINTIFFS AND DEFENDANTS. Enter the full name of the first-listed plaintiff and the first-listed defendant. If the plaintiff or defendant is the United States Government, enter "United States of America" as the party name. For cases involving multiple plaintiffs or defendants, list only the first named plaintiff and first named defendant. The names of additional parties should appear in the caption of the complaint.
II. BASIS OF JURISDICTION. Check the appropriate box. If jurisdiction is based on diversity of citizenship under 28 U.S.C. § 1332, also complete Section III. For cases in which the United States is a party, check box 1 (U.S. plaintiff) or box 2 (U.S. defendant), as appropriate. Federal question jurisdiction under 28 U.S.C. § 1331 should be indicated in box 3. Diversity jurisdiction under 28 U.S.C. § 1332 should be indicated in box 4.
III. CITIZENSHIP OF PRINCIPAL PARTIES. This section is to be completed only if diversity jurisdiction (Box 4) is checked in Section II. Mark one box for the plaintiff and one for the defendant to indicate citizenship. For corporations, the state of incorporation and the state of the principal place of business determine citizenship. A corporation is deemed a citizen of every state by which it has been incorporated and of the state where it has its principal place of business.
IV. NATURE OF SUIT. Place an "X" in the one box that best represents the nature of the suit. Refer to the Nature of Suit Code Descriptions contained in the guide issued by the Administrative Office of the United States Courts for a detailed description of each code. Use only a single code. Do not check more than one box.
V. ORIGIN. Place an "X" in the one box that describes the origin of this case. An "Original Proceeding" (Box 1) is a case that originates in the federal court. A case "Removed from State Court" (Box 2) is one that was commenced in state court and removed to federal court under 28 U.S.C. § 1441. "Remanded from Appellate Court" (Box 3) is used for cases remanded to the district court for further action. "Reinstated or Reopened" (Box 4) is used for cases that were dismissed, administratively closed, or otherwise terminated and subsequently reinstated or reopened. "Transferred from Another District" (Box 5) is used for cases transferred under 28 U.S.C. § 1404(a). "Multidistrict Litigation — Transfer" (Box 6) is used for cases transferred to this district under 28 U.S.C. § 1407. "Multidistrict Litigation — Direct File" (Box 8) is used for cases filed directly in the transferee district as tag-along actions in an MDL proceeding.
VI. CAUSE OF ACTION. Cite the U.S. civil statute under which you are filing and provide a brief description of the cause of action. The description should be concise but sufficiently detailed to permit the Clerk to assign the appropriate Nature of Suit code and to facilitate docket management. Do not cite jurisdictional statutes unless diversity is the sole basis for jurisdiction.
VII. REQUESTED IN COMPLAINT. Class Action: Check this box if the complaint is filed as a class action under Rule 23, F.R.Cv.P. Demand: Enter the dollar amount demanded in the complaint (if any). Jury Demand: Check the appropriate box to indicate whether a jury trial is demanded in the complaint.
VIII. RELATED CASE(S). A related case is one that involves the same parties, the same property, or the same facts and issues as a pending or previously terminated action in this court. If a related case exists, provide the docket number and the name of the judge to whom the related case was assigned. Consult the Local Rules for the definition of "related case" in this district.
IX. DIVISIONAL ASSIGNMENT. Pursuant to Civil Local Rule 3.2 of the Eastern District of Texas, indicate the division in which the case should be assigned. The selection should be based on the county in which the events or omissions giving rise to the claim occurred, where the defendant resides, or where the defendant has a regular and established place of business, as applicable.
IMPORTANT REMINDER. The civil cover sheet does not replace the complaint as the operative pleading. The filing of a civil cover sheet does not constitute the filing of a complaint. The complaint must be filed separately and must comply with all applicable Federal Rules of Civil Procedure and Local Rules of this Court.
— END OF CIVIL COVER SHEET —
| 1. U.S. Government Plaintiff | 3. Federal Question (U.S. Government Not a Party) | ||||
| 2. U.S. Government Defendant | 4. Diversity (Indicate Citizenship of Parties in Item III) | ||||
| PTF | DEF | PTF | DEF | ||
| Citizen of This State | 1 | 1 | Incorporated or Principal Place of Business in This State | 4 | 4 |
| Citizen of Another State | 2 | 2 | Incorporated and Principal Place of Business in Another State | 5 | 5 |
| Citizen or Subject of a Foreign Country | 3 | 3 | Foreign Nation | 6 | 6 |
| Code | Description | Selected | |||
| 110 | Insurance | ||||
| 120 | Marine | ||||
| 130 | Miller Act | ||||
| 140 | Negotiable Instrument | ||||
| 150 | Recovery of Overpayment & Enforcement of Judgment | ||||
| 151 | Medicare Act | ||||
| 152 | Recovery of Defaulted Student Loans (Excludes Veterans) | ||||
| 153 | Recovery of Overpayment of Veteran's Benefits | ||||
| 160 | Stockholders' Suits | ||||
| 190 | Other Contract | ||||
| 195 | Contract Product Liability | ||||
| 196 | Franchise | ||||
| Code | Description | Selected | |||
| 210 | Land Condemnation | ||||
| 220 | Foreclosure | ||||
| 230 | Rent Lease & Ejectment | ||||
| 240 | Torts to Land | ||||
| 250 | All Other Real Property |
| 290 | All Other Real Property | |
| Code | Description | Selected |
| 310 | Airplane | |
| 315 | Airplane Product Liability | |
| 320 | Assault, Libel & Slander | |
| 330 | Federal Employers' Liability | |
| 340 | Marine | |
| 345 | Marine Product Liability | |
| 350 | Motor Vehicle | |
| 355 | Motor Vehicle Product Liability | |
| 360 | Other Personal Injury | |
| 362 | Personal Injury — Medical Malpractice | |
| 365 | Personal Injury — Product Liability | |
| 367 | Health Care/Pharmaceutical Personal Injury Product Liability | |
| 368 | Asbestos Personal Injury Product Liability | |
| Code | Description | Selected |
| 370 | Other Fraud | |
| 371 | Truth in Lending | |
| 380 | Other Personal Property Damage | |
| 385 | Property Damage Product Liability | |
| Code | Description | Selected |
| 625 | Drug Related Seizure of Property 21 USC 881 | |
| 690 | Other | |
| Code | Description | Selected |
| 422 | Appeal 28 USC 158 |
| 423 | Withdrawal 28 USC 157 | |
| Code | Description | Selected |
| 830 | Patent | ** |
| 835 | Patent — Abbreviated New Drug Application | |
| 840 | Trademark | |
| 880 | Defend Trade Secrets Act of 2016 | |
| Code | Description | Selected |
| 710 | Fair Labor Standards Act | |
| 720 | Labor/Management Relations | |
| 740 | Railway Labor Act | |
| 751 | Family and Medical Leave Act | |
| 790 | Other Labor Litigation | |
| 791 | Employee Retirement Income Security Act | |
| Code | Description | Selected |
| 861 | HIA (1395ff) | |
| 862 | Black Lung (923) | |
| 863 | DIWC/DIWW (405(g)) | |
| 864 | SSID Title XVI | |
| 865 | RSI (405(g)) | |
| Code | Description | Selected |
| 870 | Taxes (U.S. Plaintiff or Defendant) | |
| 871 | IRS — Third Party 26 USC 7609 | |
| Code | Description | Selected |
| 462 | Naturalization Application | |
| 463 | Habeas Corpus — Alien Detainee |
| 465 | Other Immigration Actions | |
| Code | Description | Selected |
| 375 | False Claims Act | |
| 376 | Qui Tam (31 USC 3729(a)) | |
| 400 | State Reapportionment | |
| 410 | Antitrust | |
| 430 | Banks and Banking | |
| 450 | Commerce | |
| 460 | Deportation | |
| 470 | Racketeer Influenced and Corrupt Organizations | |
| 480 | Consumer Credit | |
| 485 | Telephone Consumer Protection Act | |
| 490 | Cable/Sat TV | |
| 850 | Securities/Commodities/Exchange | |
| 890 | Other Statutory Actions | |
| 891 | Agricultural Acts | |
| 893 | Environmental Matters | |
| 895 | Freedom of Information Act | |
| 896 | Arbitration | |
| 899 | Administrative Procedure Act/Review or Appeal of Agency Decision | |
| 1. Original Proceeding | 5. Transferred from Another District (specify): | |
| 2. Removed from State Court | 6. Multidistrict Litigation — Transfer | |
| 3. Remanded from Appellate Court | 8. Multidistrict Litigation — Direct File |
4. Reinstated or Reopened
| Field | Entry |
| Judge: | None |
| Docket Number: | None |
| Field | Entry |
| Case Number Assigned: | 2:24-cv-00319-JRG |
| Presiding Judge Assigned: | The Honorable James R. Gilstrap, United States District Judge |
| Magistrate Judge Assigned: | To be determined upon consent or referral |
| Filing Fee: | Paid — $402.00 received via Pay.gov, Receipt No. TXED-2024-041782 |
| Associated Docket Entry: | D.E. 2 (Civil Cover Sheet filed with Complaint at D.E. 1) |
| Date Entered on Docket: | April 22, 2024 |
| Division: | Marshall Division |
| Nature of Suit Code: | 830 — Patent |
| Jury Demand: | Yes — Plaintiff |