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 BRIEF IN OPPOSITION TO DEFENDANT LUMICORE TECHNOLOGIES, INC.'S MOTION TO STAY PENDING INTER PARTES REVIEW
STATUS: DRAFT — Contingency filing; to be finalized and filed only if Lumicore Technologies, Inc. files IPR petition(s) and moves to stay.
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I. INTRODUCTION
Plaintiff Optiwave Semiconductor Corp. ("OWS") respectfully opposes any motion by Defendant Lumicore Technologies, Inc. ("Lumicore") to stay this action pending inter partes review ("IPR") proceedings before the Patent Trial and Appeal Board ("PTAB"). A stay at this advanced stage of litigation would be unjustified, would waste the substantial judicial and party resources already invested in this case, and would inflict irreparable competitive harm on OWS — a practicing entity and direct competitor of Lumicore.
OWS is not a patent assertion entity. It is a fabless semiconductor company headquartered in Santa Clara, California, founded in 2011, that designs, develops, and markets cutting-edge silicon-photonics transceiver modules for hyperscale data centers. OWS employs approximately 1,250 people across its engineering, manufacturing, and commercial operations. In fiscal year 2023, OWS generated $487.3 million in revenue and $61.4 million in net income, as audited by Gresham & Whitfield LLP. OWS holds 142 issued United States patents and 58 pending patent applications, reflecting over a decade of sustained investment in silicon-photonics innovation. OWS is the third-largest U.S. supplier of silicon-photonics transceiver modules for hyperscale data centers, and it relies on its intellectual property portfolio to protect the competitive advantages that its research and development investments have created.
This action involves four asserted utility patents — U.S. Patent Nos. 10,234,847 (the "'847 Patent"), 10,891,193 (the "'193 Patent"), 9,678,562 (the "'562 Patent"), and 11,402,015 (the "'015 Patent") — covering optical transceiver and waveguide multiplexing technologies critical to OWS's flagship product lines, including its OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families. These patents represent the core of OWS's technology portfolio and underpin its ability to compete in an increasingly crowded marketplace.
OWS seeks approximately $210 million in damages, comprising both lost profits and reasonable royalties, together with enhanced damages for willful infringement under 35 U.S.C. § 284 and a permanent injunction. The scope of Lumicore's infringement is vast: Lumicore's accused product lines — the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR — generated approximately $264.9 million in fiscal year 2023 revenue alone. Projected accused-product revenue from product launch through the anticipated trial date (Q3 2022 through Q4 2025) is approximately $714.6 million. Every day that these products remain on the market without resolution of OWS's infringement claims compounds the harm OWS is suffering.
A stay of this action would reward Lumicore for its dilatory conduct. Lumicore has known about OWS's asserted patents since at least January 15, 2023 — more than two years before the one-year statutory deadline for filing an IPR petition — yet has filed no petition. Instead, Lumicore has litigated this case aggressively on the merits: it filed a motion to transfer (denied), served invalidity contentions citing 23 prior-art references, fully briefed claim construction on 14 disputed terms, engaged in extensive discovery (producing over 147,000 documents comprising approximately 980,000 pages), and sat for or defended five fact depositions. Any IPR petition filed at or near the May 1, 2025 statutory deadline would reflect strategic gamesmanship — an attempt to derail a well-advanced case approaching trial — not a genuine desire to resolve validity questions before the PTAB.
The well-established three-factor framework governing stay motions in this District — (1) the stage of proceedings, (2) whether a stay will simplify the issues, and (3) whether a stay would cause undue prejudice to the non-moving party — weighs decisively against a stay. As set forth in detail below, this case is at an advanced stage, with claim construction fully briefed and a Markman hearing imminent; an IPR cannot meaningfully simplify this case, which involves infringement, willfulness, damages, injunctive relief, and inequitable conduct issues far beyond the PTAB's jurisdiction; and a stay would inflict ongoing and irreparable competitive harm on OWS, a direct competitor suffering price erosion, customer diversion, and lost design-in opportunities. Lumicore's motion should be denied.
II. STATEMENT OF RELEVANT FACTS AND PROCEDURAL HISTORY
A. The Asserted Patents and OWS's Innovation
OWS's complaint asserts four utility patents, each directed to aspects of silicon-photonics transceiver technology:
The '847 Patent (U.S. Patent No. 10,234,847). Titled "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 original assignee is Optiwave Semiconductor Corp. The '847 Patent discloses and claims a novel multi-channel waveguide multiplexer architecture that achieves substantially lower insertion loss than prior-art designs, enabling higher data throughput and reduced power consumption in silicon-photonic transceiver modules. The technology claimed in the '847 Patent is embodied in OWS's OWS-400ZR and OWS-800XR transceiver modules.
The '193 Patent (U.S. Patent No. 10,891,193). Titled "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 original assignee is Optiwave Semiconductor Corp. The '193 Patent shares common Provisional Application No. 62/499,117 (filed April 7, 2017) with the '015 Patent. The '193 Patent claims a coherent optical transceiver architecture that integrates key optical and electronic components on a single silicon substrate, reducing form factor, improving signal integrity, and lowering manufacturing costs. This technology is fundamental to OWS's entire transceiver product portfolio, including its OWS-400ZR, OWS-800XR, and OWS-1600DR product families.
The '562 Patent (U.S. Patent No. 9,678,562). Titled "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., and was acquired by OWS pursuant to an asset purchase agreement dated June 15, 2018, for $34.5 million as part of a twelve-patent portfolio acquisition. The '562 Patent claims a method of thermal management for photonic integrated circuits that uses embedded micro-channel heat sinks to efficiently dissipate heat, addressing a critical engineering challenge in high-density optical transceiver designs. The '562 Patent is in the same patent family as the '847 Patent, sharing a continuation relationship.
The '015 Patent (U.S. Patent No. 11,402,015). Titled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," the '015 Patent was filed on August 30, 2019, and issued on August 2, 2022. The original assignee is Optiwave Semiconductor Corp. The '015 Patent shares common Provisional Application No. 62/499,117 (filed April 7, 2017) with the '193 Patent. The '015 Patent claims an advanced grating coupler design that achieves polarization diversity with improved coupling efficiency, enabling more robust and higher-performance silicon-photonic transceiver modules. This technology is embodied in OWS's next-generation OWS-800XR and OWS-1600DR product lines.
All four asserted patents were prosecuted by Cascade IP Advisors, LLC (lead prosecution attorney: Dr. Martin Chu), of Arlington, Virginia. All maintenance fees on all four patents are current.
The '562 and '847 Patents are in the same patent family, linked through a continuation relationship. The '193 and '015 Patents likewise share the common Provisional Application No. 62/499,117. Together, these four patents represent a cohesive body of intellectual property covering complementary aspects of silicon-photonics transceiver technology — from waveguide multiplexing and thermal management to coherent transceiver integration and polarization-diverse coupling.
B. Lumicore's Infringing Products and Pre-Suit Notice
Lumicore Technologies, Inc. is a Delaware corporation headquartered at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. Lumicore was founded in 2018 by CEO Thomas "Tom" Kessler and CTO Dr. Sandra Michaud. The company employs approximately 870 people and generated approximately $312.6 million in fiscal year 2023 revenue. Lumicore completed an initial public offering on the Nasdaq exchange in March 2022 at $24 per share, and at the time of filing this action had a market capitalization of approximately $3.4 billion (approximately $37 per share, with 91.8 million shares outstanding). Lumicore's General Counsel is Raymond Bautista.
OWS accuses three Lumicore product lines of infringement:
LumiLink 400G-ZR+. Launched in Q3 2022, this 400-gigabit coherent optical transceiver module generated $94.8 million in fiscal year 2023 revenue. OWS accuses the LumiLink 400G-ZR+ of infringing the '847, '193, and '562 Patents.
LumiLink 800G-DR8. Launched in Q1 2023, this next-generation 800-gigabit transceiver module generated $128.4 million in fiscal year 2023 revenue. OWS accuses the LumiLink 800G-DR8 of infringing all four asserted patents — the '847, '193, '562, and '015 Patents.
LumiEdge 1600G-LR. Launched in Q4 2023, this high-capacity 1600-gigabit transceiver module generated $41.7 million in fiscal year 2023 revenue. OWS accuses the LumiEdge 1600G-LR of infringing the '193 and '015 Patents. Notably, the LumiEdge 1600G-LR was launched after Lumicore had received detailed notice of OWS's patent rights.
OWS first identified potential infringement of its patents by Lumicore's products in October 2022, shortly after the launch of the LumiLink 400G-ZR+. In November 2022, OWS retained Benchmark Semiconductor Analysis, LLC (lead engineer: Kevin Ng) to conduct detailed teardown and reverse-engineering analysis of the LumiLink 400G-ZR+ module. On December 12, 2022, Benchmark delivered its teardown report, which confirmed the presence of accused waveguide multiplexer structures and thermal management micro-channels in Lumicore's product, consistent with the claims of the '847 and '562 Patents.
Armed with this analysis, OWS engaged FairPoint Licensing Group, LLC (Managing Director: Angela Reeves) to initiate licensing discussions. On January 15, 2023, FairPoint sent a detailed licensing and notice letter to Lumicore General Counsel Raymond Bautista, identifying the '847, '193, and '562 Patents and providing an initial infringement analysis.
Lumicore responded on February 28, 2023, through its outside counsel, Hawthorne Vega & Cruz LLP, disputing infringement and questioning the validity of OWS's patents. On April 20, 2023, the parties held an in-person licensing meeting in Austin, Texas, attended by Angela Reeves and Rebecca Tanaka on behalf of OWS, and Raymond Bautista and Catherine "Kate" Rourke on behalf of Lumicore. The meeting ended without resolution.
On May 15, 2023, FairPoint sent a second licensing letter to Lumicore, this time adding the '015 Patent and expanding the list of accused products to include the LumiLink 800G-DR8, which had launched in Q1 2023. On July 10, 2023, Lumicore formally declined to take a license, stating that it had obtained "competent legal opinions" that its products do not infringe OWS's patents.
Despite this notice, Lumicore proceeded to launch the LumiEdge 1600G-LR in Q4 2023. OWS's subsequent analysis identified additional infringement of the '193 and '015 Patents by this new product line.
Having exhausted its pre-suit licensing efforts, OWS formally engaged Calderwood & Harkness LLP on March 18, 2024. On April 22, 2024, OWS filed its complaint in this Court, asserting seven counts: four counts of direct infringement (one for each 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. OWS alleges both literal infringement and infringement under the doctrine of equivalents, with doctrine-of-equivalents theories specifically directed to Claims 3 and 7 of the '193 Patent and Claim 12 of the '015 Patent.
C. Advanced Stage of Proceedings
This case has progressed through extensive pre-trial proceedings over the past ten months, and is on an orderly and efficient track toward trial. The following detailed procedural timeline demonstrates the substantial investment of judicial and party resources that would be wasted by a stay:
• April 22, 2024: OWS filed its Complaint (D.E. 1), initiating this action.
• June 17, 2024: Lumicore filed its Answer and Counterclaims (D.E. 12), asserting counterclaims including declaratory judgment of non-infringement, invalidity, and inequitable conduct/unenforceability. On the same date, Lumicore filed a Motion to Transfer Venue to the Western District of Texas (D.E. 13).
• August 5, 2024: The Court denied Lumicore's Motion to Transfer (D.E. 25, Order by Judge Gilstrap), finding that Lumicore had not established that the transferee venue would be clearly more convenient for the parties and witnesses.
• August 12, 2024: The Court entered its Scheduling Order / Docket Control Order (D.E. 27), setting a Markman hearing for March 14, 2025, and a jury trial for February 2, 2026 (estimated 7–10 days), along with all intermediate deadlines for discovery, expert reports, and dispositive motions.
• August 15, 2024: The parties executed their ESI Protocol Agreement, establishing procedures for electronic discovery using the Relativity platform, including agreed-upon search-term methodology, native-format production for source code, and TIFF plus load file production for all other documents.
• September 16, 2024: OWS served its P.R. 3-1 Infringement Contentions (D.E. 32), providing detailed claim-by-claim, limitation-by-limitation infringement contentions for all four asserted patents across all three accused product lines. These contentions were accompanied by claim charts mapping each element of the asserted claims to specific features of the accused products, supported by teardown photographs, schematics, and technical analysis.
• October 1, 2024: OWS served a Rule 30(b)(6) deposition notice on Lumicore, designating 18 topics for corporate-representative testimony.
• October 14, 2024: Lumicore served its P.R. 3-3 Invalidity Contentions (D.E. 36), citing 23 prior-art references across the four asserted patents, including multiple U.S. patents, international publications, academic journal articles, conference papers, and internal design documents.
• October 28, 2024: The parties filed their Joint Claim Construction Statement (D.E. 40), identifying 14 disputed claim terms for construction by the Court.
• November 15, 2024: OWS filed its Opening Claim Construction Brief (D.E. 44), a 50-page brief with extensive analysis of the intrinsic record, prosecution history, and extrinsic evidence, accompanied by expert declarations from Dr. Caroline Ashford, Professor of Electrical Engineering and Photonics at the Northfield Institute of Technology, and Dr. Jian-Wei Huang, OWS's Chief Technology Officer and a named inventor on three of the four asserted patents.
• December 6, 2024: Lumicore filed its Responsive Claim Construction Brief (D.E. 48), accompanied by an expert declaration from Dr. Rajesh Sundaram, Professor of Photonic Systems at Pacific Western University.
• December 20, 2024: OWS filed its Reply Claim Construction Brief (D.E. 52), with a supplemental declaration from Dr. Ashford addressing points raised in Lumicore's responsive brief and Dr. Sundaram's declaration.
• January 10, 2025: Lumicore filed its Sur-Reply Claim Construction Brief (D.E. 56), by leave of Court, addressing narrow issues of claim construction that Lumicore contended were raised for the first time in OWS's reply.
• January 15, 2025: The parties filed their Joint Claim Construction Chart (final) (D.E. 58), consolidating the parties' proposed constructions and disputed terms for the Court's use at the Markman hearing.
• February 2025: Claim construction tutorial submissions are due to the Court to assist in preparation for the Markman hearing.
• March 14, 2025: Markman hearing scheduled before Judge Gilstrap.
discovery Is Substantially Advanced. The parties have engaged in extensive discovery throughout the fall and winter of 2024. 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. In total, the parties have exchanged over 329,000 documents totaling approximately 2.38 million pages.
Five fact depositions have been completed:
1. Dr. Jian-Wei Huang (OWS CTO and named inventor) — November 5, 2024.
2. Dr. Sandra Michaud (Lumicore CTO) — November 19, 2024.
3. Raymond Bautista (Lumicore General Counsel) — December 3, 2024 (limited in scope due to privilege issues that are the subject of ongoing motion practice).
4. Angela Reeves (Managing Director, FairPoint Licensing Group, LLC) — December 10, 2024.
5. Kevin Ng (Lead Engineer, Benchmark Semiconductor Analysis, LLC) — January 7, 2025.
Approximately twelve additional fact depositions remain, in addition to all expert depositions. The parties have actively litigated discovery disputes, including OWS's Motion to Compel Production of Opinion-of-Counsel Letters (D.E. 38), which remains pending before the Court, and Lumicore's Motion for Protective Order regarding financial data (D.E. 42), which the Court granted in part, entering a three-tier confidentiality order designating documents as Confidential, Highly Confidential — Attorneys' Eyes Only, or Highly Confidential — Source Code. OWS has served two sets of Requests for Production totaling 115 individual requests (85 initial plus 30 supplemental), 25 interrogatories, and 40 Requests for Admission.
Remaining Schedule. The following key deadlines remain:
D. Lumicore's Delay in Filing IPR Petitions
Under 35 U.S.C. § 315(b), a party may not file an IPR petition more than one year after the date on which the petitioner is served with a complaint alleging infringement of the patent. OWS's complaint was served on Lumicore's registered agent, National Agent Services Corp., on May 1, 2024. Accordingly, the statutory deadline for Lumicore to file any IPR petition is May 1, 2025.
As of the date of this draft, Lumicore has not filed any IPR petition with respect to any of the four asserted patents. While Lumicore has reserved its right to petition for IPR, it has taken no affirmative step to do so despite having had ample time and motivation.
The delay is particularly striking in context. Lumicore has had knowledge of OWS's asserted patents since at least January 15, 2023, when FairPoint Licensing Group, LLC sent its first detailed licensing and notice letter identifying the '847, '193, and '562 Patents. By May 15, 2023, Lumicore had also been put on notice of the '015 Patent. Lumicore retained Marlowe Asset Management Patent Analytics, Inc. (Atlanta, Georgia) as a prior-art search firm, and its invalidity contentions — served on October 14, 2024 — cite 23 prior-art references across the four asserted patents. This comprehensive prior-art compilation demonstrates that Lumicore has had ample opportunity to evaluate its validity positions and compile the prior art necessary for an IPR petition far earlier than any anticipated filing date.
Any petition filed at or near the May 1, 2025 statutory deadline would come more than two years after Lumicore first received notice of OWS's patents, more than one year after service of the complaint, and after the parties have fully briefed claim construction, completed five fact depositions, and exchanged hundreds of thousands of documents. Such timing reflects strategic gamesmanship — an attempt to use the IPR process as a tactical delay tool — not a genuine effort to resolve validity questions before the PTAB. As courts in this District have repeatedly recognized, this kind of delay weighs heavily against a stay.
III. LEGAL STANDARD
A district court possesses inherent authority to manage its docket, including discretion to stay proceedings pending IPR before the PTAB. See Murata Mach. USA, Inc. v. Daifuku Co., No. 6:20-cv-00505-ADA, 2021 WL 1206388 (W.D. Tex. Mar. 31, 2021); Kestrel Partners LLC, Inc. v. Quigg, 849 F.2d 1422, 1426–27 (Fed. Cir. 1988). However, a stay pending IPR is not automatic and is never granted as a matter of right. Rather, the movant bears the burden of establishing that a stay is warranted under the circumstances of the particular case.
Courts in the Eastern District of Texas, consistent with Federal Circuit guidance, apply a well-established three-factor test in evaluating motions to stay pending IPR:
First, whether a stay will simplify the issues in question. The court examines whether the IPR is likely to simplify the case by narrowing or eliminating claims or issues. If the IPR covers only a subset of the asserted claims or raises validity arguments that are already being fully litigated in district court, simplification is unlikely. See VirtualAgility Inc. v. Bramwell & Co., 759 F.3d 1307, 1314 (Fed. Cir. 2014).
Second, whether discovery is complete and a trial date has been set. The court assesses the stage of the litigation, including whether the court has invested significant resources in claim construction or other proceedings, whether discovery is well underway or complete, and whether a trial date is imminent. The more advanced the litigation, the more strongly this factor weighs against a stay. See Rensselaer Polytechnic Inst. v. Hollowell & Co., No. 1:18-cv-00549, 2020 WL 2475665 (N.D.N.Y. May 13, 2020); Evolutionary intelligence, LLC v. Sprint Nextel Corp., No. 1:13-cv-04513 (N.D. Ill. Feb. 11, 2014).
Third, whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party. The court considers whether the non-moving party will suffer undue prejudice from delay, with particular attention to cases where the parties are direct competitors and the non-moving party is suffering ongoing harm from the accused infringement. See PersonalWeb Techs., LLC v. Tidewater Industries, Inc., 69 F. Supp. 3d 1022, 1025 (N.D. Cal. 2014).
The burden of establishing that a stay is warranted rests squarely on the movant — here, Lumicore. VirtualAgility, 759 F.3d at 1314. Where, as here, the litigation is well advanced, the potential for simplification is marginal, and the non-moving party is a direct competitor suffering ongoing harm, courts in this District routinely deny motions to stay. See, e.g., Uniloc 2017 LLC v. Camberwell & Co., No. 6:19-cv-00532, 2020 WL 3414702 (E.D. Tex. June 22, 2020) (denying stay where case was at advanced stage); Godo Kaisha IP Bridge 1 v. TCL Commc'n Tech. Holdings Ltd., No. 2:15-cv-00634-JRG, 2017 WL 750295 (E.D. Tex. Feb. 27, 2017) (same). Lumicore cannot meet that burden here.
IV. ARGUMENT
A. The Advanced Stage of This Litigation Weighs Heavily Against a Stay
1. Extensive Claim Construction Proceedings Are Complete or Nearly Complete. The parties have devoted months of intensive effort to claim construction proceedings that are now substantially complete. The parties identified 14 disputed claim terms across the four asserted patents, filed a Joint Claim Construction Statement (D.E. 40), and fully briefed their respective positions over the course of four rounds of briefing: OWS's Opening Claim Construction Brief (D.E. 44, filed November 15, 2024), Lumicore's Responsive Claim Construction Brief (D.E. 48, filed December 6, 2024), OWS's Reply Claim Construction Brief (D.E. 52, filed December 20, 2024), and Lumicore's Sur-Reply Claim Construction Brief (D.E. 56, filed January 10, 2025, by leave of Court). These four briefs collectively total hundreds of pages of detailed analysis of intrinsic evidence — including patent claims, specifications, and prosecution history — as well as extrinsic evidence, including technical dictionaries, treatises, and expert testimony.
Both parties submitted expert declarations in support of their claim-construction positions. OWS submitted declarations from Dr. Caroline Ashford, Professor of Electrical Engineering and Photonics at the Northfield Institute of Technology, a leading expert in silicon-photonics design and fabrication, and Dr. Jian-Wei Huang, OWS's Chief Technology Officer and a named inventor on three of the four asserted patents. OWS subsequently filed a supplemental declaration from Dr. Ashford with its reply brief. Lumicore submitted a declaration from Dr. Rajesh Sundaram, Professor of Photonic Systems at Pacific Western University. Each of these declarations provides detailed technical analysis of the disputed claim terms, offering opinions on how a person of ordinary skill in the art would understand those terms in light of the intrinsic and extrinsic record.
The Joint Claim Construction Chart (final) was filed on January 15, 2025 (D.E. 58), consolidating the parties' competing proposed constructions in a format ready for the Court's use at the Markman hearing. Claim construction tutorial submissions are due in February 2025, and the Markman hearing itself is scheduled for March 14, 2025, before Judge Gilstrap.
The Court has already invested — and will continue to invest — substantial judicial resources in reviewing, analyzing, and adjudicating the claim construction record. Granting a stay at this juncture would render that investment a nullity. If IPR proceedings were to result in amended claims, the parties would potentially need to re-litigate claim construction from scratch — wasting the Court's time, the parties' resources, and the considerable effort of the expert witnesses who have already submitted detailed technical opinions. This factor weighs strongly against a stay.
2. Fact discovery Is Substantially Complete. Fact discovery in this case is well advanced. As of January 2025, the parties have exchanged over 329,000 documents totaling approximately 2.38 million pages — with OWS having produced approximately 182,000 documents (1.4 million pages) and Lumicore having produced approximately 147,000 documents (980,000 pages). These productions include technical documents, engineering design files, source code, financial records, sales data, marketing materials, internal communications, and licensing-related correspondence.
Five fact depositions have already been completed, including depositions of both parties' most senior technical officers (Dr. Jian-Wei Huang, OWS's CTO, on November 5, 2024, and Dr. Sandra Michaud, Lumicore's CTO, on November 19, 2024), Lumicore's General Counsel (Raymond Bautista, on December 3, 2024, subject to privilege limitations that are the subject of OWS's pending Motion to Compel), the managing director of OWS's licensing agent (Angela Reeves of FairPoint Licensing Group, LLC, on December 10, 2024), and the lead engineer responsible for OWS's teardown analysis (Kevin Ng of Benchmark Semiconductor Analysis, LLC, on January 7, 2025). These depositions covered critical topics including the development of the accused products, Lumicore's knowledge of OWS's patents, licensing negotiations, technical infringement analysis, and the competitive dynamics between the parties.
OWS has served two sets of Requests for Production totaling 85 initial and 30 supplemental requests (115 total), 25 interrogatories, and 40 Requests for Admission. OWS has also served a Rule 30(b)(6) deposition notice designating 18 topics for corporate-representative testimony by Lumicore. The parties have actively litigated discovery disputes: OWS's Motion to Compel Production of Opinion-of-Counsel Letters (D.E. 38) remains pending, and the Court has already ruled on Lumicore's Motion for Protective Order regarding financial data (D.E. 42), entering a three-tier confidentiality order to govern the production and use of sensitive business information.
Fact discovery is scheduled to close on May 1, 2025, a date set by the Court's Scheduling Order of August 12, 2024 (D.E. 27). While approximately twelve additional fact depositions remain, the bulk of document discovery has been completed, and the depositions taken to date cover the core issues of infringement, validity, damages, and willfulness. A stay at this point would require the parties to maintain all of this discovery in a state of readiness for an indefinite period — a significant and unjustified burden.
3. A Firm Trial Date Has Been Set. This case has a firm trial date of February 2, 2026, set by Judge Gilstrap in the Court's Scheduling Order of August 12, 2024. Trial is estimated to last 7 to 10 days before a jury. The pre-trial conference is scheduled for January 5, 2026. The case is on a clear and orderly path to trial, with all remaining deadlines established and approaching:
Expert reports are due June 15, 2025 (plaintiff) and July 15, 2025 (defendant rebuttal). Expert discovery closes August 15, 2025. Dispositive motions are due September 15, 2025. Daubert motions are due November 1, 2025. These deadlines reflect a comprehensive case-management schedule designed to ensure efficient preparation for trial.
The existence of a firm trial date is one of the most significant factors weighing against a stay. Courts in this District consistently accord substantial weight to the trial date, particularly when, as here, the trial date is less than one year away and the case has progressed through extensive pre-trial proceedings. A stay would not merely pause the case — it would upend the entire case-management schedule, requiring the Court and the parties to restart significant portions of the pre-trial process, including refreshing discovery, re-deposing witnesses whose memories may have faded, and re-preparing expert analyses. The disruption to the Court's docket management would be substantial and unwarranted.
B. An IPR Will Not Meaningfully Simplify the Issues
1. Lumicore's Invalidity Contentions Are Already Fully Joined in This Court. The invalidity issues that Lumicore would raise in any IPR petition are already being fully litigated in this Court. On October 14, 2024, Lumicore served its P.R. 3-3 Invalidity Contentions (D.E. 36), identifying 23 prior-art references across the four asserted patents. These references include prior patents, international publications, academic journal articles, and conference papers — precisely the categories of prior art that can be raised in an IPR. Among the key references cited in Lumicore's invalidity contentions are:
• Takahashi et al. (IEEE Photonics Technology Letters, March 2014) — asserted against the '847 Patent as an anticipation reference under 35 U.S.C. § 102.
• U.S. Patent No. 8,412,007 (Bergmann) (issued April 2, 2013) — asserted against the '562 Patent for obviousness under 35 U.S.C. § 103.
• PCT/EP2015/071234 (Simonsen) (published September 17, 2015) — asserted against the '847 Patent for obviousness under 35 U.S.C. § 103.
• Dr. Li Wei, "Thermal Solutions for PICs" (OFC 2013 conference paper, March 2013) — asserted against the '562 Patent as an anticipation reference under 35 U.S.C. § 102.
• Lumicore's own internal design documents (2016–2017) — asserted against the '015 Patent as a prior-conception defense.
These same references — or a subset of them — would inevitably form the basis of any IPR petition filed by Lumicore. The IPR would therefore be duplicative of the validity issues already being litigated in this Court. Far from simplifying the case, the IPR would create parallel proceedings addressing the same prior art, with the attendant risk of inconsistent outcomes and unnecessary duplication of effort.
Moreover, Lumicore has asserted a counterclaim for inequitable conduct and unenforceability, which cannot be adjudicated in an IPR proceeding. Regardless of whether an IPR is instituted, this Court must retain jurisdiction over Lumicore's inequitable conduct counterclaim. The existence of this counterclaim further undermines any claim that an IPR would simplify the proceedings, as the case cannot be fully resolved without this Court's adjudication of all claims and counterclaims.
2. IPR Cannot Resolve the Entirety of This Case. Even if the PTAB were to institute review of some or all of the asserted patents, the IPR would address only a narrow subset of the issues in this case. IPR proceedings are limited to validity challenges based on patents and printed publications under 35 U.S.C. §§ 102 and 103. The following issues — each of which is central to this case — fall entirely outside the PTAB's jurisdiction and would remain for trial regardless:
• Infringement — both literal infringement and infringement under the doctrine of equivalents. OWS has asserted doctrine-of-equivalents theories with respect to Claims 3 and 7 of the '193 Patent and Claim 12 of the '015 Patent.
• Willful infringement and enhanced damages under 35 U.S.C. § 284. OWS has alleged that Lumicore launched the LumiEdge 1600G-LR after receiving detailed notice of OWS's patent rights, and that Lumicore continued to sell all accused products despite being aware of the asserted patents. Willfulness is a fact-intensive inquiry that cannot be addressed in an IPR.
• Damages — including lost profits under the four-factor Panduit analysis, reasonable royalties under the Georgia-Pacific framework, and enhanced damages for willful infringement.
• Permanent injunction under the Northgate Group v. MercExchange, L.L.C., 547 U.S. 388 (2006), four-factor framework.
• Induced infringement under 35 U.S.C. § 271(b) and contributory infringement under 35 U.S.C. § 271(c).
• Inequitable conduct / unenforceability — Lumicore's counterclaim, which is a matter of purely equitable jurisdiction that only a district court can adjudicate.
• Lumicore's prior-conception defense regarding the '015 Patent, which relies on uncorroborated internal design documents from 2016–2017, not on patents or printed publications that could be raised in an IPR.
The breadth and complexity of the issues that would remain for trial — even in the unlikely event that the PTAB were to cancel some claims — demonstrate that an IPR cannot meaningfully simplify this case. Even if certain claims were narrowed or eliminated, the remaining claims, the multiple infringement theories (including doctrine of equivalents), the damages analysis, the willfulness inquiry, and the injunction and inequitable conduct issues would all proceed to trial. Any simplification would be marginal at best and is far outweighed by the significant delay and prejudice that a stay would impose.
3. Institution of IPR Is Not Guaranteed. Lumicore's anticipated motion to stay rests on the assumption that the PTAB will institute IPR on any petition it may file. But institution is discretionary and far from certain. The PTAB declines to institute IPR in a substantial percentage of petitions, and the rate of discretionary denial is particularly elevated where, as here, the parallel district-court litigation is well advanced.
Under the PTAB's framework for discretionary denial — as articulated in Camberwell & Co. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020), and refined by subsequent Director guidance — the Board considers several factors in determining whether to exercise its discretion to deny institution, including the proximity of the trial date to the projected statutory deadline for the PTAB's final written decision, whether the petitioner and defendant in the district-court proceeding are the same party, and the overlap between the petition and the district-court invalidity contentions.
Here, the trial date of February 2, 2026, is highly relevant. Assuming an IPR petition is filed at or near the May 1, 2025 statutory deadline, and assuming institution occurs approximately six months later (around November 2025), the PTAB's final written decision would not issue until approximately May 2027 — more than a year after the scheduled trial. Under the Fintiv factors, the existence of a trial date that precedes the expected final written decision weighs strongly in favor of discretionary denial.
In short, there is no certainty — or even a strong likelihood — that any IPR petition will be instituted. Staying this case on the speculative hope that the PTAB might institute review and might cancel some claims would be premature and unjustified.
C. A Stay Would Cause Undue Prejudice to OWS
1. OWS and Lumicore Are Direct Competitors. OWS and Lumicore are direct, head-to-head competitors in the silicon-photonics transceiver market for hyperscale data centers. This is not a case involving a non-practicing entity or a patent holder operating in a different market segment. OWS's key products — the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families — compete directly with Lumicore's accused products — the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR.
OWS is the third-largest U.S. supplier of silicon-photonics transceiver modules for hyperscale data centers. Lumicore is a fast-growing entrant in the same market, having rapidly expanded since its 2022 IPO. Customer overlap analysis conducted by OWS demonstrates that OWS and Lumicore compete head-to-head at 12 of the top 20 hyperscale data-center operators. At least seven major hyperscale customers purchase transceiver modules from both OWS and Lumicore, creating direct competitive encounters at the point of sale for each new design-in opportunity.
The competitive significance of Lumicore's accused products cannot be overstated. Those products generated $264.9 million in fiscal year 2023 revenue — approximately 42% of Lumicore's total product revenue. The LumiLink 400G-ZR+ contributed $94.8 million, the LumiLink 800G-DR8 contributed $128.4 million, and the LumiEdge 1600G-LR contributed $41.7 million. If OWS prevails at trial, approximately 42% of Lumicore's product revenue would be subject to a permanent injunction. These figures underscore the direct competitive nature of the parties' relationship and the magnitude of the harm OWS is suffering.
Courts consistently accord the direct-competitor factor substantial weight in evaluating prejudice from a proposed stay. Where, as here, the patentee and accused infringer compete in the same market for the same customers, every month of delay causes incremental and often irreversible competitive harm that cannot be adequately remedied by money damages alone.
2. OWS Is Suffering Ongoing Irreparable Harm During the Pendency of This Action. The harm OWS is suffering from Lumicore's continued sale of accused products is ongoing and, in significant respects, irreparable:
Price erosion. Since Lumicore launched the LumiLink 400G-ZR+ in Q3 2022, the average selling price of 400G-ZR transceiver modules in the relevant market has declined by 18.7% through Q4 2023. While price declines are a feature of technology markets generally, the magnitude and timing of this decline are attributable in significant part to Lumicore's entry into the market with infringing products that undercut OWS's pricing. Once prices erode, it is extraordinarily difficult — if not impossible — to restore them to pre-infringement levels, even after a favorable judgment. Price erosion thus constitutes a form of irreparable harm that a stay would only exacerbate.
Customer diversion. OWS has identified specific instances in which it has lost sales to Lumicore's accused products. In the hyperscale data-center market, purchasing decisions are made through competitive evaluation processes in which transceiver module vendors are invited to bid on design-in opportunities. When a customer selects Lumicore's accused product over OWS's competing product, that sale is lost — often permanently for the duration of the product lifecycle — and OWS's competitive position is weakened for future opportunities with that customer.
Loss of design-in opportunities. In the data-center interconnect market, design wins are "sticky." Once a customer qualifies a transceiver module for deployment in its infrastructure, the switching costs associated with re-qualifying an alternative module are substantial, encompassing engineering validation, interoperability testing, firmware integration, and supply-chain qualification. The vendor that wins a design-in opportunity typically retains that customer relationship for multiple product generations. Every month of delay in resolving this action allows Lumicore to compete for and win new design-in opportunities using infringing technology, entrenching itself with customers that OWS might otherwise serve. These lost opportunities are particularly difficult to quantify and remediate after the fact, and they compound over time.
Projected accused-product revenue from Q3 2022 through Q4 2025 is approximately $714.6 million. Every month that passes without resolution of OWS's infringement claims allows Lumicore to generate tens of millions of dollars in additional revenue from accused products, further deepening the competitive harm to OWS and making any ultimate remedy more difficult to craft and enforce.
3. Lumicore's Delay Compounds the Prejudice. Lumicore's failure to timely file any IPR petition substantially compounds the prejudice that a stay would inflict on OWS. Lumicore has known about OWS's patents since at least January 15, 2023, when FairPoint Licensing Group, LLC sent its first detailed licensing and notice letter. It was put on notice of all four asserted patents no later than May 15, 2023. It was served with the complaint on May 1, 2024. At each stage, Lumicore had the information and the incentive to file an IPR petition if it genuinely believed that OWS's patents were invalid.
Yet Lumicore chose a different path. It declined to take a license, stating it had "competent legal opinions" that its products do not infringe. It retained Marlowe Asset Management Patent Analytics, Inc. as a prior-art search firm. It served invalidity contentions on October 14, 2024, citing 23 prior-art references — demonstrating that it had completed the substantive work necessary for an IPR petition months ago. Still, it filed no petition.
Any IPR filing at or near the May 1, 2025 statutory deadline — nearly one year after service of the complaint and more than two years after first receiving notice of OWS's patents — would come at the tail end of the permissible window and at a point when this case is deep into pre-trial proceedings. The timing would be unmistakably strategic: a last-ditch effort to delay trial after extensive litigation, not a genuine attempt to resolve validity questions before a specialized tribunal.
Courts in this District routinely recognize and reject such tactics. When a defendant delays filing an IPR petition until the eleventh hour — particularly after participating actively in the district-court litigation — the delay itself is evidence that the petition is being used as a tactical tool rather than a substantive validity challenge. This delay-based prejudice is separate from, and compounds, the ongoing competitive harm OWS is suffering from Lumicore's continued infringement.
4. Financial Prejudice. Beyond the competitive harm detailed above, a stay would impose substantial financial prejudice on OWS. OWS has already invested significant resources in this litigation. Calderwood & Harkness LLP has incurred approximately $3.2 million in attorney fees through January 2025, plus approximately $198,400 in costs (including document review vendors, deposition transcription, travel, and technical consulting), for a total billed amount of approximately $3.4 million. OWS's Board of Directors, with the approval of OWS's private-equity sponsor, Ridgeline Capital Partners, LP (200 Clarendon Street, 40th Floor, Boston, Massachusetts 02116; Managing Partner Franklin Osei), which holds a 55% equity interest in OWS, has authorized a litigation budget of $18.5 million through trial, pursuant to Board Resolution No. 2024-07.
OWS has also retained — and is in the process of engaging — expert witnesses at substantial cost. Expert fees are budgeted at approximately $2.8 million, including Dr. Caroline Ashford of the Northfield Institute of Technology (estimated fees of $1.1 million for claim construction, infringement, and validity opinions), Dr. Lawrence Keating of Meridian Economic Consulting Group, LLC (estimated fees of $950,000 for damages analysis), Gregory Falk (estimated fees of $375,000 for technical rebuttal opinions), and Benchmark Semiconductor Analysis, LLC (estimated fees of $375,000 for additional teardown analysis and trial support).
A stay would not eliminate these sunk costs. To the contrary, a stay would likely increase OWS's total litigation expenditures. During any stay period, OWS would need to maintain litigation readiness — preserving document productions, retaining counsel and experts, and monitoring IPR proceedings. When the stay lifted, OWS would face the burden and expense of refreshing stale discovery, re-deposing witnesses whose memories had faded, and re-preparing expert analyses in light of any IPR outcomes. The incremental costs of a stay — in money, management attention, and litigation uncertainty — are substantial.
OWS's private-equity sponsor, Ridgeline Capital Partners, LP, approved the $18.5 million litigation budget on the expectation of a trial in February 2026. An indefinite delay would undermine investor confidence in OWS's ability to protect its intellectual property and business position, with potential downstream effects on OWS's valuation, strategic planning, and ability to attract additional investment.
D. The Balance of Equities and Public Interest Favor Denying a Stay
The balance of equities and the public interest weigh strongly in favor of denying a stay. The public has a strong interest in the efficient resolution of patent disputes, particularly where, as here, the parties are direct competitors and the accused products are commercially significant in a critical technology sector. Silicon-photonics transceiver modules are essential components of the data-center interconnect infrastructure that supports cloud computing, artificial intelligence workloads, and the broader digital economy. The efficient adjudication of intellectual property rights in this technology area serves the public interest in promoting innovation and fair competition.
The Eastern District of Texas maintains its docket schedules to ensure the prompt and efficient resolution of patent cases. Judge Gilstrap has a well-established record of managing complex patent cases to trial on schedule, and the docket-management interests of this Court would be poorly served by staying a case that has progressed to the advanced stage this one has reached.
Lumicore faces no cognizable prejudice from proceeding to trial on the established schedule. It has been fully aware of OWS's patents for over two years. It has developed and served comprehensive invalidity contentions citing 23 prior-art references. It has engaged highly experienced litigation counsel at Hawthorne Vega & Cruz LLP, led by Catherine "Kate" Rourke and Darren Cho. It has retained technical and damages experts, including Dr. Rajesh Sundaram of Pacific Western University (validity/technical expert) and Dr. Natasha Volkov of Pinnacle Analytics Partners LLP (Houston, Texas) (damages expert). Lumicore is fully prepared to defend this case on the merits.
OWS, by contrast, suffers compounding competitive harm with each passing month. The equities plainly favor proceeding to trial and denying Lumicore's motion.
V. ALTERNATIVE ARGUMENT: IF THE COURT IS INCLINED TO CONSIDER A PARTIAL STAY, IT SHOULD IMPOSE STRICT CONDITIONS
OWS submits that no stay of any kind is warranted under the circumstances of this case. However, if the Court is inclined to consider any stay, OWS respectfully requests that the stay be limited in scope and duration and subject to the following conditions:
1. No stay of injunction proceedings. OWS should be permitted to continue pursuing preliminary or permanent injunctive relief notwithstanding any stay. OWS is a practicing entity and direct competitor suffering ongoing irreparable harm from Lumicore's continued infringement. The right to seek injunctive relief — which is distinct from the validity issues that would be addressed in an IPR — should not be suspended.
2. No stay of discovery on willful infringement. Because the PTAB has no jurisdiction to address willful infringement, and because the willfulness inquiry is necessarily fact-intensive and time-sensitive (involving evidence of Lumicore's state of mind, its knowledge of OWS's patents, and its post-notice conduct), discovery and motion practice on willful infringement and enhanced damages under 35 U.S.C. § 284 should continue unabated during any stay period.
3. Time limit. Any stay should be strictly limited in duration — no longer than 90 to 120 days — and should automatically lift if: (a) the PTAB does not institute IPR on any petition within six months of filing; or (b) Lumicore fails to file an IPR petition within 30 days of the Court's order granting the stay. These conditions are necessary to prevent Lumicore from using a stay as an indefinite delay tactic.
4. Bond. Lumicore should be required to post a bond or other adequate security to compensate OWS for the ongoing competitive and financial harm it will suffer during any stay period. Given the magnitude of Lumicore's accused-product revenue — approximately $264.9 million in fiscal year 2023, with projected revenue through trial of approximately $714.6 million — the bond should be set at a level sufficient to provide OWS with meaningful protection.
5. Preservation of trial date. The February 2, 2026 trial date should not be vacated. Any stay should expire no later than a date that preserves the trial schedule, permitting the parties sufficient time to complete any remaining pre-trial proceedings and proceed to trial as originally scheduled by the Court. If the stay would require vacatur of the trial date, it should not be granted.
These conditions are necessary to protect OWS's interests and to ensure that any stay, if granted, does not become a tool for indefinite delay at OWS's expense.
VI. CONCLUSION
For the foregoing reasons, Plaintiff Optiwave Semiconductor Corp. respectfully requests that the Court deny Defendant Lumicore Technologies, Inc.'s motion to stay this action pending inter partes review.
The advanced stage of these proceedings weighs decisively against a stay. The parties have fully briefed claim construction on 14 disputed terms across four patents, supported by expert declarations and hundreds of pages of briefing. The Markman hearing before Judge Gilstrap is scheduled for March 14, 2025. The parties have exchanged over 329,000 documents comprising approximately 2.38 million pages. Five fact depositions have been completed, including depositions of both parties' chief technology officers. A firm trial date of February 2, 2026, has been set, with all intermediate deadlines established and on track.
An IPR will not meaningfully simplify this case. Lumicore's invalidity contentions, citing 23 prior-art references, are already fully joined in this Court. The IPR cannot address infringement (literal or under the doctrine of equivalents), willful infringement, damages (OWS's demand is approximately $210 million), permanent injunction, induced and contributory infringement, inequitable conduct, or Lumicore's prior-conception defense. Even if some claims were narrowed or eliminated, the remaining issues would proceed to trial.
A stay would cause undue prejudice to OWS. The parties are direct competitors in the silicon-photonics transceiver market. OWS is suffering ongoing price erosion (18.7% decline in average selling prices since Lumicore's market entry), customer diversion, and loss of design-in opportunities that are difficult or impossible to remediate. Lumicore's accused products generated $264.9 million in fiscal year 2023 revenue, with projected accused-product revenue through trial of approximately $714.6 million.
Finally, Lumicore's delay in filing any IPR petition — despite having known about OWS's patents since January 15, 2023, and having identified 23 prior-art references in its invalidity contentions served on October 14, 2024 — confirms that any anticipated motion to stay is a tactical maneuver to delay trial, not a genuine effort to resolve validity questions before the PTAB.
The Court should deny the motion in its entirety.
VII. SIGNATURE BLOCK
Respectfully submitted,
CALDERWOOD & HARKNESS LLP
By: ________
Alan Ngo (CA Bar No. 287415; admitted pro hac vice E.D. Tex.) 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071 Telephone: (213) 443-7800
Email: alan.ngo@calderwoodharkness.com
Marcus Delgado (TX Bar No. 24098712; CA Bar No. 301288) Wendy Schultz (CA Bar No. 312476; admitted pro hac vice E.D. Tex.) Omar Siddiqui (CA Bar No. 318903; admitted pro hac vice E.D. Tex.)
1201 F Street NW, Suite 700 Washington, DC 20004 Telephone: (202) 654-9200
WHITMORE & CALLAHAN LLP
By: ________
James "Jim" Callahan (TX Bar No. 03782519) 110 North College Avenue, Suite 800 Tyler, TX 75702 Telephone: (903) 597-6300
Email: jcallahan@whitmorecallahan.com
Attorneys for Plaintiff Optiwave Semiconductor Corp.
VIII. CERTIFICATE OF SERVICE
I hereby certify that on ____, 2025, a true and correct copy of the foregoing Plaintiff Optiwave Semiconductor Corp.'s Brief in Opposition to Defendant Lumicore Technologies, Inc.'s Motion to Stay Pending Inter Partes Review was served on all counsel of record via the Court's CM/ECF electronic filing system, which will send notification of such filing to the following:
Catherine "Kate" Rourke Darren Cho Samantha Briggs Rohan Iyer HAWTHORNE VEGA & CRUZ LLP 600 Congress Avenue, Suite 2400 Austin, TX 78701
Maria Garza TRASK EDDINGTON LLP 425 East Front Street, Suite 300 Tyler, TX 75701
________________________________________
Alan Ngo
IX. APPENDICES / EXHIBITS
The following exhibits are to be attached upon filing:
Exhibit 1. Scheduling Order / Docket Control Order (D.E. 27, August 12, 2024)
This exhibit contains the Court's Scheduling Order entered on August 12, 2024, establishing the following key dates and deadlines for this action: Markman hearing on March 14, 2025; fact discovery close on May 1, 2025; plaintiff expert reports due June 15, 2025; defendant rebuttal expert reports due July 15, 2025; expert discovery close 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 (estimated 7–10 days). This exhibit demonstrates the advanced case-management posture of this litigation and the firm trial date that would be disrupted by any stay.
Exhibit 2. Joint Claim Construction Chart (Final) (D.E. 58, January 15, 2025)
This exhibit contains the Joint Claim Construction Chart filed by the parties on January 15, 2025, consolidating the parties' proposed constructions for 14 disputed claim terms across the four asserted patents. This exhibit demonstrates the substantial investment of party and judicial resources in claim construction proceedings, which are fully briefed and awaiting the March 14, 2025 Markman hearing.
Exhibit 3. Timeline of Lumicore's Knowledge of OWS Patents
This exhibit presents a chronological timeline of Lumicore's notice and knowledge of the asserted patents, including:
• January 15, 2023: FairPoint Licensing Group, LLC sends first licensing/notice letter to Lumicore GC Raymond Bautista, identifying the '847, '193, and '562 Patents.
• February 28, 2023: Lumicore responds through Hawthorne Vega & Cruz LLP, disputing infringement and questioning validity.
• April 20, 2023: In-person licensing meeting in Austin, Texas.
• May 15, 2023: FairPoint sends second licensing letter, adding the '015 Patent and expanding accused products.
• July 10, 2023: Lumicore formally declines to take a license.
• Q4 2023: Lumicore launches LumiEdge 1600G-LR after receiving notice of OWS's patents.
• April 22, 2024: OWS files complaint.
• May 1, 2024: Complaint served on Lumicore's registered agent, National Agent Services Corp.
• October 14, 2024: Lumicore serves invalidity contentions citing 23 prior-art references.
• May 1, 2025: 35 U.S.C. § 315(b) statutory deadline for filing IPR petition.
This exhibit demonstrates that Lumicore has had knowledge of OWS's patents for more than two years and has had ample time to evaluate and file any IPR petition, yet has delayed doing so.
Exhibit 4. Summary of Document Productions and Depositions Completed
This exhibit provides a summary of the discovery completed in this action as of January 2025:
Document Productions:
Depositions Completed:
This exhibit demonstrates the substantial investment in discovery that would be wasted or would require refreshing if this case were stayed.
Exhibit 5. Declaration of [OWS Representative or Alan Ngo]
[To be drafted and finalized upon filing. This declaration will attest to the following:]
• The direct competitive relationship between OWS and Lumicore in the silicon-photonics transceiver market for hyperscale data centers.
• Specific instances of competitive harm, including price erosion (18.7% decline in average selling prices of 400G-ZR transceiver modules from Q3 2022 to Q4 2023), customer diversion, and lost design-in opportunities attributable to Lumicore's accused products.
• OWS's status as a practicing entity, with the asserted patents embodied in its commercial products (OWS-400ZR, OWS-800XR, OWS-1600DR).
• The "sticky" nature of design-in wins in the hyperscale data-center market and the difficulty of recapturing lost design-in opportunities once a competitor has been qualified.