UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S INITIAL DISCLOSURES PURSUANT TO FEDERAL RULE OF CIVIL PROCEDURE 26(a)(1)
Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff"), by and through its counsel of record, Calderwood & Harkness LLP and local counsel Whitmore & Callahan LLP, hereby serves its Initial Disclosures pursuant to Federal Rule of Civil Procedure 26(a)(1) and the Court's Scheduling Order dated August 12, 2024 (D.E. 27). These Initial Disclosures are served on this 19th day of August, 2024.
OWS reserves the right to supplement or amend these disclosures as discovery proceeds, as additional information becomes known, or as otherwise required by Federal Rule of Civil Procedure 26(e) and the Court's orders. These disclosures are based on information reasonably available to OWS and its counsel as of the date of service and are not intended to be an exhaustive identification of all individuals who may have discoverable information, all documents that may be relevant, or all aspects of OWS's damages computation. The investigation and discovery in this action are ongoing, and OWS anticipates that additional information will become available as discovery progresses.
These disclosures are made without waiver of any objections, privileges, or protections of any kind, including but not limited to objections to the admissibility, relevance, or authenticity of any document or testimony, and any claim of attorney-client privilege, work-product protection, or any other applicable privilege or protection recognized under federal or state law. Nothing herein shall be construed as a waiver or limitation of any right OWS may have under the Federal Rules of Civil Procedure, the Federal Rules of Evidence, or applicable law.
These disclosures are subject to the Stipulated Protective Order entered in this action (D.E. 31), which establishes three tiers of confidentiality designation: "Confidential," "Highly Confidential — Attorneys' Eyes Only," and "Highly Confidential — Source Code." Certain of the documents and information described herein may be designated under one or more of these confidentiality tiers when produced.
I. INDIVIDUALS LIKELY TO HAVE DISCOVERABLE INFORMATION — Rule 26(a)(1)(A)(i)
Pursuant to Federal Rule of Civil Procedure 26(a)(1)(A)(i), OWS identifies the following individuals as likely to have discoverable information that OWS may use to support its claims or defenses. For each individual identified below, OWS provides the individual's name, address (or last known address), and a general description of the subjects of information the individual is believed to possess. The description of topics set forth for each individual is a general summary provided for convenience and is not intended to be a comprehensive or exhaustive statement of all subjects about which the individual may have knowledge. OWS reserves the right to supplement this list as additional information becomes available through discovery or otherwise.
A. Optiwave Semiconductor Corp. Personnel
1. Dr. Priya Ramaswamy
Chief Executive Officer, Optiwave Semiconductor Corp. 4810 Bayside Technology Parkway, Suite 300 Santa Clara, CA 95054
Dr. Ramaswamy is likely to have discoverable information concerning the following subjects: OWS's corporate history, organizational structure, and business strategy; OWS's competitive positioning in the silicon-photonics transceiver market, including its position as the third-largest U.S. supplier of silicon-photonics transceiver modules for hyperscale data centers; OWS's investment in research and development and its technology development programs; OWS's patent portfolio strategy, including the decision to acquire the Solara Optics patent portfolio; the impact of Lumicore's accused products on OWS's business, including lost revenue and lost market share; authorization and approval of this litigation; OWS's relationship with Ridgeline Capital Partners, LP; and the strategic importance of OWS's intellectual property assets.
2. Dr. Jian-Wei Huang
Chief Technology Officer, Optiwave Semiconductor Corp. 4810 Bayside Technology Parkway, Suite 300 Santa Clara, CA 95054
Dr. Huang is likely to have discoverable information concerning the following subjects: the conception, design, and development of the inventions claimed in U.S. Patent Nos. 10,234,847 (the "'847 Patent"), 10,891,193 (the "'193 Patent"), and 11,402,015 (the "'015 Patent"); the state of the art in silicon photonics, waveguide multiplexing, coherent optical transceivers, thermal management of photonic integrated circuits, and polarization-diverse grating couplers at the time of each patent filing; the prosecution history of the asserted patents, including communications with prosecution counsel; identification and analysis of prior art relevant to the asserted patents; the technical comparison between OWS's products and Lumicore's accused products, including the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR; the functionality, technical specifications, and commercial success of OWS's OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families; secondary considerations of non-obviousness, including long-felt need, failure of others, and industry praise; and the technical landscape of the silicon-photonics transceiver industry.
3. Rebecca Tanaka
General Counsel, Optiwave Semiconductor Corp. 4810 Bayside Technology Parkway, Suite 300 Santa Clara, CA 95054
Ms. Tanaka is likely to have discoverable information concerning the following subjects: chain of title for each of the four asserted patents; the Asset Purchase Agreement dated June 15, 2018 between OWS and Solara Optics, Inc. for acquisition of U.S. Patent No. 9,678,562 (the "'562 Patent") and related patents; OWS's patent prosecution and enforcement strategy; pre-suit identification of potential infringement by Lumicore Technologies, Inc.; the engagement of FairPoint Licensing Group, LLC to conduct licensing outreach to Lumicore; the engagement of Benchmark Semiconductor Analysis, LLC to perform teardown analysis of Lumicore's accused products; pre-suit licensing correspondence with Lumicore, including Ms. Tanaka's personal participation in the April 20, 2023 in-person licensing meeting in Austin, Texas; the engagement of Calderwood & Harkness LLP and Whitmore & Callahan LLP as litigation counsel; OWS's insurance coverage under Pacific Rim Insurance Group Policy No. PLI-2023-08812; implementation and management of the litigation hold and document preservation program; and OWS's intellectual property management policies and procedures.
4. Dr. Nikolai Petrov
Vice President of Engineering, Photonics Division, Optiwave Semiconductor Corp. 4810 Bayside Technology Parkway, Suite 300 Santa Clara, CA 95054
Dr. Petrov is likely to have discoverable information concerning the following subjects: the design, development, testing, and manufacturing of OWS's transceiver products that practice the asserted patents, including the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families; technical features of OWS's commercial products that embody the claimed inventions of the asserted patents; the competitive landscape for silicon-photonic transceiver modules used in hyperscale data centers, including technical comparisons among competing products; identification of infringing features in Lumicore's accused products based on engineering analysis and review of the Benchmark teardown reports; analysis of non-infringing alternatives available to Lumicore; OWS's manufacturing capacity and marketing capability to serve demand displaced by Lumicore's accused products; and the engineering significance and commercial value of the patented innovations.
5. David Leitner
Chief Financial Officer, Optiwave Semiconductor Corp. 4810 Bayside Technology Parkway, Suite 300 Santa Clara, CA 95054
Mr. Leitner is likely to have discoverable information concerning the following subjects: OWS's financial performance, including FY 2023 revenue of $487.3 million and FY 2023 net income of $61.4 million; revenue, costs of goods sold, and gross margins for OWS products competing with Lumicore's accused products, including a gross margin of approximately 47.3% for OWS's competing transceiver module product lines; product-level financial data and profitability analyses for the OWS-400ZR, OWS-800XR, and OWS-1600DR families; pricing trends in the silicon-photonics transceiver market; revenue attributable to OWS products that practice the asserted patents, which constituted approximately $310 million of FY 2023 revenue; the financial impact of Lumicore's market entry on OWS's revenue, margins, and profitability; the Solara Optics APA purchase price of $34.5 million and the financial due diligence conducted in connection with that acquisition; OWS's budgeting and financial forecasting for its transceiver product lines; and OWS's audited financial statements prepared by Gresham & Whitfield LLP.
6. Karen Whitfield
Vice President of Sales, Optiwave Semiconductor Corp. 4810 Bayside Technology Parkway, Suite 300 Santa Clara, CA 95054
Ms. Whitfield is likely to have discoverable information concerning the following subjects: OWS's customer relationships in the hyperscale data-center market; lost sales attributable to Lumicore's accused products, including specific instances of customer diversion; lost design-in opportunities at hyperscale data-center operators where OWS and Lumicore compete head-to-head; pricing pressure and price erosion caused by the introduction and sale of Lumicore's accused products, including the approximately 18.7% decline in average selling prices for 400G-ZR transceivers from Q3 2022 to Q4 2023; competitive head-to-head encounters with Lumicore in customer procurement processes; market-share displacement; OWS's sales pipeline and forecasting data; and the identity of the 12 hyperscale data-center operators where OWS and Lumicore compete directly.
7. Regional Sales Directors (Names to Be Supplemented)
Three regional sales directors employed by Optiwave Semiconductor Corp. at various OWS offices, whose names and contact information will be supplemented pursuant to Federal Rule of Civil Procedure 26(e) as soon as practicable. These individuals are likely to have discoverable information concerning specific instances of customer diversion and lost business opportunities attributable to Lumicore's accused products in their respective sales territories, including individual customer accounts lost to Lumicore, competitive bid situations in which Lumicore's accused products displaced OWS products, and feedback from customers regarding Lumicore's product offerings.
B. Ridgeline Capital Partners, LP Personnel
8. Franklin Osei
Managing Partner, Ridgeline Capital Partners, LP, and Board Chair, Optiwave Semiconductor Corp. 200 Clarendon Street, 40th Floor Boston, MA 02116
Mr. Osei is likely to have discoverable information concerning the following subjects: Ridgeline Capital Partners' acquisition of a 55% equity stake in OWS in 2019 for approximately $780 million; the investment thesis underlying Ridgeline's investment in OWS, including the strategic value of OWS's patent portfolio and its competitive position in the silicon-photonics transceiver market; the OWS Board of Directors' authorization of this litigation, including Board Resolution No. 2024-07; approval of the approximately $18.5 million litigation budget; Ridgeline's oversight of OWS's strategic direction and intellectual property enforcement decisions; and the anticipated return on Ridgeline's investment in OWS.
C. Solara Optics, Inc. / Former Solara Personnel
9. Gregory Falk
Formerly Vice President of Engineering, Solara Optics, Inc. (dissolved 2020); currently an independent consultant. Last known address to be provided upon confirmation.
Mr. Falk is likely to have discoverable information concerning the following subjects: the conception and development of the inventions claimed in U.S. Patent No. 9,678,562 (the "'562 Patent"); Solara Optics' silicon-photonics research and development program, including the engineering team, timeline, and key milestones of the program; the state of the art in thermal management of photonic integrated circuits at the time of the '562 Patent filing on November 22, 2014; Solara's archived technical records related to the '562 Patent and continuation applications deriving therefrom; industry background information, including the competitive landscape, technology evolution, and commercial significance of the patented innovations in waveguide multiplexing and thermal management; long-felt need in the industry for low-insertion-loss waveguide multiplexing and the failure of others to address that need prior to the inventions disclosed in the '562 Patent; and the circumstances of Solara Optics' dissolution and the transfer of its patent portfolio to OWS.
D. Cascade IP Advisors, LLC Personnel
10. Dr. Martin Chu
Lead Patent Prosecution Attorney, Cascade IP Advisors, LLC 1550 Crystal Drive, Suite 600 Arlington, VA 22202
Dr. Chu is likely to have discoverable information concerning the following subjects: the prosecution of all four asserted patents before the United States Patent and Trademark Office, including the preparation and filing of patent applications and the prosecution of those applications through issuance; prosecution history for each asserted patent, including office actions received from the USPTO, applicant responses and amendments, declarations submitted in support of patentability, examiner interviews and interview summaries, and the basis for claim amendments made during prosecution; prior art considered during prosecution, including references cited by the examiner and references submitted by the applicant; chain of title documentation prepared or reviewed in connection with the prosecution of the asserted patents; maintenance fee status and payment history for all four asserted patents; and any matters relevant to the rebuttal of Lumicore's anticipated inequitable conduct allegations.
E. FairPoint Licensing Group, LLC Personnel
11. Angela Reeves
Managing Director, FairPoint Licensing Group, LLC 500 Sansome Street, Suite 1400 San Francisco, CA 94111
Ms. Reeves is likely to have discoverable information concerning the following subjects: pre-suit licensing outreach to Lumicore Technologies, Inc. conducted on behalf of OWS; the preparation and transmission of the January 15, 2023 licensing and notice letter addressed to Raymond Bautista, General Counsel of Lumicore, identifying the '847, '193, and '562 Patents and providing detailed claim charts; the May 15, 2023 supplemental licensing letter adding the '015 Patent (which issued on August 2, 2022) and expanding the identification of accused products to include the LumiLink 800G-DR8; the April 20, 2023 in-person licensing meeting held in Austin, Texas, which was attended by Ms. Reeves, Rebecca Tanaka (OWS General Counsel), Raymond Bautista (Lumicore General Counsel), and Catherine "Kate" Rourke (Hawthorne Vega & Cruz LLP), including the substance of the discussions and presentations made at that meeting; Lumicore's refusal to negotiate a license in good faith; Lumicore's July 10, 2023 declination letter, in which Lumicore referenced "competent legal opinions" as the basis for its refusal to take a license; the comparable license agreements used in FairPoint's licensing program on behalf of OWS, including the OWS-Terralink Semiconductor license (2020, 6.5% running royalty), the OWS-NovaWave Corp. license (2021, 9.0% running royalty), and the OWS-Helix Integrated Photonics license (2022, 7.75% running royalty plus $2.5 million upfront payment); FairPoint's licensing analysis, royalty-rate calculations, and comparable license evaluations; and the overall history and course of the pre-suit licensing campaign.
F. Benchmark Semiconductor Analysis, LLC Personnel
12. Kevin Ng
Lead Engineer, Benchmark Semiconductor Analysis, LLC 2244 Mission College Boulevard Santa Clara, CA 95054
Mr. Ng is likely to have discoverable information concerning the following subjects: the reverse engineering and teardown analysis of Lumicore's accused products, including the LumiLink 400G-ZR+ (teardown report delivered December 12, 2022), the LumiLink 800G-DR8 (follow-on teardown report delivered June 2023), and the LumiEdge 1600G-LR (teardown report delivered February 2024); the identification of accused structures and features within the teardown products, including waveguide multiplexer structures, thermal management micro-channel heat sinks, coherent transceiver features, and polarization-diverse grating coupler structures corresponding to the claim limitations of the asserted patents; the chain of custody for accused product samples obtained for teardown analysis; the teardown methodology employed by Benchmark, including die-level imaging, cross-sectional analysis, and scanning electron microscopy; the equipment and procedures used in each teardown; and the preparation and delivery of the teardown reports.
G. Third-Party Fact Witness
13. Melissa Chen
Formerly employed by Lumicore Technologies, Inc. (2020–2024); currently employed at Veridian Photonics, Inc. Contact information to be confirmed; last known employer address: Veridian Photonics, Inc., 1800 Gateway Boulevard, San Jose, CA 95110.
Ms. Chen is likely to have discoverable information concerning the following subjects: her work as a member of Lumicore's LumiLink 400G-ZR+ design team during the product's development phase in 2021–2022; Lumicore's engineering team's access to and review of OWS's published patent applications, including Published Application No. 2018/0123456 (corresponding to the '193 Patent), during the LumiLink 400G-ZR+ product design phase; Lumicore's awareness of OWS's patent portfolio and patented technology during the development of the accused products; the design decisions made by Lumicore's engineering team with knowledge of OWS's published applications; and any internal discussions or communications within Lumicore's engineering team regarding OWS's intellectual property.
H. Lumicore Technologies, Inc. Personnel (Adverse Party Witnesses)
14. Thomas "Tom" Kessler
Chief Executive Officer, Lumicore Technologies, Inc. 9200 Spectrum Boulevard, Building C Austin, TX 78759
Mr. Kessler is likely to have discoverable information concerning the following subjects: Lumicore's corporate history, organizational structure, and business strategy; Lumicore's decision to enter the silicon-photonics transceiver market; Lumicore's knowledge of OWS and OWS's patent portfolio; the decision-making process within Lumicore regarding the response to OWS's licensing outreach and the ultimate decision to decline a license from OWS; Lumicore's competitive strategy with respect to OWS; and Lumicore's overall financial performance and strategic objectives.
15. Dr. Sandra Michaud
Chief Technology Officer, Lumicore Technologies, Inc. 9200 Spectrum Boulevard, Building C Austin, TX 78759
Dr. Michaud is likely to have discoverable information concerning the following subjects: the design and development of Lumicore's accused products, including the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR; the review of OWS's published patent applications during the LumiLink design phase; Lumicore's awareness of OWS's issued patents and the relevance of those patents to Lumicore's product designs; the technical features and specifications of Lumicore's accused products, including the accused waveguide multiplexer structures, thermal management features, coherent transceiver architecture, and polarization-diverse grating coupler designs; the availability and feasibility of non-infringing design alternatives; and Lumicore's research and development processes and engineering decision-making.
16. Raymond Bautista
General Counsel, Lumicore Technologies, Inc. 9200 Spectrum Boulevard, Building C Austin, TX 78759
Mr. Bautista is likely to have discoverable information concerning the following subjects: receipt and handling of FairPoint Licensing Group's January 15, 2023 and May 15, 2023 licensing and notice letters; Mr. Bautista's participation in the April 20, 2023 in-person licensing meeting in Austin, Texas; the commissioning of opinion-of-counsel letters regarding the asserted patents; the preparation and transmission of Lumicore's July 10, 2023 declination letter, which referenced "competent legal opinions" as the basis for Lumicore's refusal to license; the decision not to take a license from OWS; Lumicore's internal legal analysis of OWS's patent assertions; and Lumicore's litigation strategy and counterclaim theories.
17. Dr. Eric Dalmqvist
Vice President of Product Development, Lumicore Technologies, Inc. 9200 Spectrum Boulevard, Building C Austin, TX 78759
Dr. Dalmqvist is likely to have discoverable information concerning the following subjects: the development timeline and technical specifications of Lumicore's accused products; Lumicore's product roadmap and development processes for the LumiLink and LumiEdge product lines; Dr. Dalmqvist's knowledge of OWS's patents and published patent applications; design decisions relating to the infringing features identified in the Benchmark teardown reports; and the technical feasibility and cost of implementing non-infringing design alternatives.
18. Janet Moreno
Chief Financial Officer, Lumicore Technologies, Inc. 9200 Spectrum Boulevard, Building C Austin, TX 78759
Ms. Moreno is likely to have discoverable information concerning the following subjects: Lumicore's financial data, including revenue, cost of goods sold, and profit margin data for the accused product lines; FY 2023 revenue data for the accused products, including LumiLink 400G-ZR+ revenue of approximately $94.8 million, LumiLink 800G-DR8 revenue of approximately $128.4 million, and LumiEdge 1600G-LR revenue of approximately $41.7 million, for a total accused-product revenue of approximately $264.9 million in FY 2023; Lumicore's overall company revenue, estimated at approximately $312.6 million for FY 2023; pricing strategies and profitability of the accused products; Lumicore's financial forecasts and projections for the accused product lines; and Lumicore's SEC filings and publicly reported financial information.
I. Expert Witnesses (Identified for Completeness; Expert Disclosures to Follow Under Rule 26(a)(2))
The following individuals are identified for completeness. OWS anticipates retaining these individuals as expert witnesses in this action. Full expert disclosures, including expert reports, will be served in accordance with Federal Rule of Civil Procedure 26(a)(2) and the Court's Scheduling Order, which sets the deadline for Plaintiff's expert reports as June 15, 2025.
19. Dr. Caroline Ashford
Professor of Electrical Engineering & Photonics Northfield Institute of Technology Evanston, IL 60208
Dr. Ashford is anticipated to serve as OWS's technical and infringement expert. She is expected to provide expert testimony regarding claim construction, infringement analysis, validity, and the technology at issue in this case. Dr. Ashford's expert report is due June 15, 2025, in accordance with the Court's Scheduling Order.
20. Dr. Lawrence Keating
Managing Director, Meridian Economic Consulting Group, LLC 233 South Wacker Drive, Suite 4400 Chicago, IL 60606
Dr. Keating is anticipated to serve as OWS's damages expert. He is expected to provide expert testimony regarding the computation of damages, including lost profits under the Panduit framework, reasonable royalty under the Georgia-Pacific framework, and enhanced damages for willful infringement. Dr. Keating's expert report is due June 15, 2025, in accordance with the Court's Scheduling Order.
21. Gregory Falk
Independent Consultant (also identified above as a fact witness)
Mr. Falk is anticipated to serve as OWS's industry expert. He is expected to provide expert testimony regarding the silicon-photonics industry, including the state of the art, commercial significance of the patented innovations, long-felt need, and failure of others. Mr. Falk's expert report is due June 15, 2025, in accordance with the Court's Scheduling Order.
OWS reserves the right to identify additional individuals who may have discoverable information as discovery proceeds, including individuals identified by Defendant in its initial or supplemental disclosures. OWS further reserves the right to call as witnesses at trial any individual identified by Defendant in its initial disclosures, supplemental disclosures, or other discovery responses.
II. DOCUMENTS, ELECTRONICALLY STORED INFORMATION, AND TANGIBLE THINGS — Rule 26(a)(1)(A)(ii)
Pursuant to Federal Rule of Civil Procedure 26(a)(1)(A)(ii), OWS provides the following description, by category, of documents, electronically stored information ("ESI"), and tangible things in the possession, custody, or control of OWS that OWS may use to support its claims or defenses, unless the use would be solely for impeachment. OWS will produce documents in accordance with the ESI Protocol Agreement dated August 15, 2024 (D.E. 29), and the Stipulated Protective Order (D.E. 31). OWS reserves the right to supplement this description as additional documents and information are identified in the course of discovery.
A. Asserted Patents and Prosecution Histories
1. Certified copies of 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"), including all claims, specifications, abstracts, and drawings for each patent.
2. Complete prosecution histories (file wrappers) for each of the four asserted patents, including all provisional applications (including Provisional Application No. 62/499,117, filed April 7, 2017, from which the '847 Patent claims priority), nonprovisional applications, continuation applications, and continuation-in-part applications; all office actions issued by the United States Patent and Trademark Office ("USPTO"); all applicant responses, claim amendments, arguments, and remarks; all declarations and affidavits submitted during prosecution; all terminal disclaimers, if any; all examiner interview summaries; all Notices of Allowance; all Issue Fee Transmittals; and all other documents forming part of the prosecution record.
3. Prosecution histories of related patent family members, including continuation and continuation-in-part applications in the '562 Patent/'847 Patent family and any other related applications sharing common priority or disclosure.
4. Assignment records recorded at the USPTO evidencing the chain of title for each asserted patent from the original inventor(s) to OWS, including assignments from individual inventors to the original assignees (Optiwave Semiconductor Corp. and Solara Optics, Inc., as applicable) and the assignment from Solara Optics, Inc. to OWS for the '562 Patent, recorded pursuant to the Asset Purchase Agreement dated June 15, 2018.
5. Maintenance fee payment records for all four asserted patents, confirming that all maintenance fees are current and that each patent remains in full force and effect.
B. Patent Acquisition Documents
1. The Asset Purchase Agreement ("APA") between Optiwave Semiconductor Corp. and Solara Optics, Inc. dated June 15, 2018, pursuant to which OWS acquired the '562 Patent and eleven other patents and patent applications for a total purchase price of $34.5 million.
2. All schedules and exhibits to the APA, including the schedule identifying each of the transferred patents and patent applications by number, title, filing date, and issue date.
3. Assignment documents executed in connection with the APA, including executed patent assignments recorded at the USPTO.
4. Due diligence materials relating to the Solara Optics patent portfolio reviewed or prepared in connection with the APA, including patent valuation analyses, technical assessments, and freedom-to-operate evaluations, to the extent not subject to attorney-client privilege or work-product protection.
C. OWS Product and Technical Documents
1. Technical specifications, design documents, engineering records, and development histories for OWS's OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families, which are the OWS products that practice the asserted patents and compete directly with Lumicore's accused products.
2. Documents showing the relationship between the claimed inventions in the asserted patents and the specific features embodied in OWS's commercial transceiver products, including internal engineering analyses, claim mapping exercises, and design-to-patent correlation documents.
3. Marketing materials, product datasheets, application notes, white papers, and customer-facing documentation for OWS's transceiver products, including materials used in competitive evaluations against Lumicore's accused products.
4. Documents evidencing OWS's manufacturing capacity and marketing capability to serve the demand displaced by Lumicore's accused products, including manufacturing capacity utilization reports, production line specifications, and supply-chain documentation.
D. Infringement Analysis and Teardown Reports
1. Benchmark Semiconductor Analysis, LLC teardown reports for Lumicore's accused products:
(a) LumiLink 400G-ZR+ teardown report, delivered December 12, 2022;
(b) LumiLink 800G-DR8 follow-on teardown report, delivered June 2023; and
(c) LumiEdge 1600G-LR teardown report, delivered February 2024.
2. Physical samples and photographic, optical, and scanning electron microscopy images of accused product components obtained during the Benchmark teardowns, including die-level images, cross-sectional photographs, and annotated micrographs.
3. Internal OWS engineering analyses identifying potential infringement by Lumicore's accused products, originating in October 2022, including preliminary technical comparisons prepared by OWS's engineering staff.
4. Claim charts mapping the accused features of Lumicore's LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR products to the asserted claims of the '847, '193, '562, and '015 Patents.
E. Pre-Suit Licensing Correspondence
1. FairPoint Licensing Group, LLC's first licensing and notice letter to Lumicore's General Counsel, Raymond Bautista, dated January 15, 2023, identifying the '847, '193, and '562 Patents and including detailed claim charts mapping Lumicore's LumiLink 400G-ZR+ product to the asserted patent claims.
2. Lumicore's response to the January 15, 2023 letter, transmitted via outside counsel Hawthorne Vega & Cruz LLP (Catherine "Kate" Rourke), dated February 28, 2023, in which Lumicore disputed infringement and questioned the validity of the asserted patents.
3. Records and notes relating to the April 20, 2023 in-person licensing meeting held in Austin, Texas, attended by Angela Reeves (FairPoint Licensing Group), Rebecca Tanaka (OWS General Counsel), Raymond Bautista (Lumicore General Counsel), and Catherine "Kate" Rourke (Hawthorne Vega & Cruz LLP), including meeting agendas, presentation materials, and contemporaneous notes.
4. FairPoint Licensing Group's second licensing letter, dated May 15, 2023, adding the '015 Patent (which issued on August 2, 2022) and expanding the scope of accused products to include the LumiLink 800G-DR8, with accompanying supplemental claim charts.
5. Lumicore's July 10, 2023 declination letter, stating that Lumicore had obtained "competent legal opinions" that its products do not infringe OWS's asserted patents and declining to continue license negotiations.
6. Internal OWS and FairPoint Licensing Group communications relating to the licensing outreach to Lumicore, including strategy memoranda, correspondence, and internal analyses, to the extent not subject to attorney-client privilege or work-product protection.
F. Comparable License Agreements
1. License agreement between OWS and Terralink Semiconductor (2020), providing for a 6.5% running royalty on approximately $45 million in licensed revenue.
2. License agreement between OWS and NovaWave Corp. (2021), providing for a 9.0% running royalty on approximately $22 million in licensed revenue.
3. License agreement between OWS and Helix Integrated Photonics (2022), providing for a 7.75% running royalty plus a $2.5 million upfront payment on approximately $68 million in licensed revenue.
4. To the extent in OWS's possession, custody, or control, information concerning industry-comparable license agreements in the silicon-photonics transceiver field, including the Stratos Photonics v. ArcLight Systems settlement (2019, 8.0% royalty rate) and the Coreline Technologies v. Prisma Semiconductor cross-license (2021, 10.2% effective royalty rate).
G. Financial and Damages-Related Documents
1. OWS's audited financial statements for fiscal years 2021, 2022, and 2023, as audited by Gresham & Whitfield LLP (San Jose office), including balance sheets, income statements, statements of cash flows, and accompanying notes.
2. Product-level revenue, cost of goods sold, and gross margin data for OWS products competing with Lumicore's accused products, specifically the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families.
3. Internal OWS sales reports, customer-by-customer revenue data, and sales pipeline data reflecting competition with Lumicore's accused products, including reports identifying specific customer accounts and procurement opportunities.
4. Pricing data and analyses showing average selling price ("ASP") trends for OWS's transceiver products, including documentation of the approximately 18.7% decline in 400G-ZR transceiver ASPs from Q3 2022 to Q4 2023.
5. Documents relating to OWS's market position as the third-largest U.S. supplier of silicon-photonics transceiver modules for hyperscale data centers, including market-share analyses and industry rankings.
6. Market research reports and competitive intelligence analyses relating to the silicon-photonics transceiver market, including reports prepared by or for OWS and third-party industry reports.
7. Documents concerning the 12 hyperscale data-center operators where OWS and Lumicore compete head-to-head, including customer relationship histories, bid records, and competitive win/loss analyses.
8. Documents relating to lost design-in opportunities attributable to Lumicore's entry into the market with the accused products, including records of customer design-in processes from which OWS was displaced.
H. Corporate and Organizational Documents
1. OWS's Certificate of Incorporation filed with the State of Delaware, corporate bylaws, and certificates of good standing from the State of Delaware and the State of California.
2. OWS Board Resolution No. 2024-07, authorizing the filing and prosecution of this litigation against Lumicore Technologies, Inc.
3. Documents relating to Ridgeline Capital Partners, LP's acquisition of a 55% equity stake in OWS in 2019 for approximately $780 million, including the equity purchase agreement and related transaction documents.
4. OWS's patent portfolio summary, reflecting 142 issued U.S. patents and 58 pending U.S. patent applications as of the date of these disclosures.
I. Technical Publications, Standards, and Prior Art
1. Technical publications, academic journal articles, conference proceedings, standards documents (including applicable IEEE standards governing optical transceiver specifications and performance), textbooks, and other technical literature relating to the state of the art in silicon photonics, waveguide multiplexing, coherent optical transceivers, thermal management of photonic integrated circuits, and polarization-diverse grating couplers at the time of the asserted patents' respective priority and filing dates.
2. Documents relevant to secondary considerations of non-obviousness, including evidence of long-felt need in the industry for the patented innovations, failure of others to achieve the results disclosed and claimed in the asserted patents, commercial success of products practicing the patented inventions, industry praise and recognition of the patented technologies, and copying by competitors.
J. Documents Obtained from Lumicore (Publicly Available)
1. Lumicore's SEC filings, including its Form 10-K annual reports and Form 10-Q quarterly reports, which disclose revenue and other financial data for the accused product lines.
2. Lumicore's product datasheets, marketing materials, press releases, and other publicly available technical and promotional documentation for the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR products.
3. Lumicore's initial public offering prospectus filed with the SEC in connection with its March 2022 IPO on the Nasdaq stock exchange at an initial offering price of $24 per share, which contains descriptions of Lumicore's products, technology, competitive positioning, and risk factors.
OWS will produce responsive, non-privileged documents on a rolling basis in accordance with the ESI Protocol Agreement and the Court's Scheduling Order. Documents withheld or redacted on grounds of attorney-client privilege, work-product protection, or other applicable privilege will be identified on a privilege log in accordance with the requirements of the Court's orders and the Federal Rules of Civil Procedure.
III. COMPUTATION OF DAMAGES — Rule 26(a)(1)(A)(iii)
Pursuant to Federal Rule of Civil Procedure 26(a)(1)(A)(iii), OWS provides the following computation of each category of damages claimed, together with a description of the documents and other evidentiary material on which each computation is based. OWS's damages computations are preliminary and are based on information presently available to OWS. OWS reserves the right to supplement and refine its damages calculations as additional financial data is obtained through discovery, including Lumicore's product-level revenue, cost of goods sold, and profit margin data, which are presently within Lumicore's exclusive possession, custody, and control.
A. Overview. OWS seeks approximately $210 million in damages in this action, comprising lost profits, a reasonable royalty on accused-product sales for which lost profits cannot be proven, and enhanced damages for Lumicore's willful infringement, as well as a permanent injunction against continued infringement. The $210 million demand reflects a blended, conservative estimate of the three damages theories described below and is not a simple arithmetic sum of the individual theory maxima. Rather, it incorporates probability-weighted scenarios across the three theories and accounts for overlap and potential judicial limitations. OWS's retained damages expert, Dr. Lawrence Keating of Meridian Economic Consulting Group, LLC, has performed a preliminary analysis supporting the damages figures set forth below and will present multiple scenarios in his expert report, due June 15, 2025.
B. Theory 1: Lost Profits (Panduit Analysis)
OWS contends that it lost sales of its OWS-400ZR and OWS-800XR transceiver modules as a direct result of Lumicore's manufacture, use, sale, offer for sale, and importation of infringing products. OWS and Lumicore are direct competitors in the silicon-photonics transceiver market for hyperscale data centers, and OWS's products practice each of the four asserted patents. OWS seeks lost-profit damages under the framework established in Panduit Corp. v. Stahlin Brothers Fibre Works, Inc., 575 F.2d 1152 (6th Cir. 1978), and its progeny.
Infringement Period: The relevant infringement period commences in Q3 2022, when Lumicore launched the LumiLink 400G-ZR+ (the first accused product to enter the market), and extends through the projected trial date of February 2, 2026. OWS will update this calculation to reflect actual accused-product revenue through the date of trial.
Projected Total Accused-Product Revenue During Infringement Period: Based on publicly available information from Lumicore's SEC filings, OWS's competitive intelligence, and Dr. Keating's preliminary analysis, the projected total revenue for Lumicore's three accused product lines during the infringement period (Q3 2022 through Q4 2025) is approximately $714.6 million.
Market-Share Displacement: Dr. Keating's preliminary analysis indicates that approximately 38.2% of Lumicore's accused-product sales would have been captured by OWS absent Lumicore's infringement. This figure is based on the customer overlap between OWS and Lumicore at 12 of the top 20 hyperscale data-center operators, OWS's established position and design-in history at those customers, and market-share data.
OWS Gross Margin on Competing Products: OWS's gross margin on its competing transceiver module product lines is approximately 47.3%, as reflected in OWS's internal financial records and audited financial statements.
Lost-Profit Damages Estimate:
$714.6 million × 38.2% × 47.3% ≈ $128.9 million
Panduit Factor Analysis:
OWS satisfies all four Panduit factors:
(1) Demand for the patented product. OWS's FY 2023 revenue was $487.3 million, of which approximately $310 million was attributable to products practicing the asserted patents. The substantial and growing demand for silicon-photonics transceiver modules in the hyperscale data-center market is well documented.
(2) Absence of acceptable non-infringing substitutes. The asserted patents cover fundamental innovations in waveguide multiplexing, thermal management, coherent transceiver architecture, and polarization-diverse grating coupler design. There are no acceptable non-infringing substitutes that provide equivalent performance characteristics and that Lumicore could have offered to its customers during the infringement period without utilizing the patented technology.
(3) Manufacturing and marketing capability. OWS had, and continues to have, sufficient manufacturing capacity and marketing capability to serve the demand displaced by Lumicore's accused products. OWS's fabrication facilities in Santa Clara, California and its outsourced semiconductor assembly and test ("OSAT") partnerships provide scalable production capacity.
(4) Amount of profit OWS would have made. OWS's gross margin of 47.3% on competing products establishes the profit OWS would have earned on the diverted sales, yielding the lost-profit estimate of approximately $128.9 million.
Supporting Documents: OWS's audited financial statements prepared by Gresham & Whitfield LLP for FY 2021, FY 2022, and FY 2023; product-level profit and loss data for OWS's competing transceiver products; OWS sales records and pipeline data; customer overlap analysis; Benchmark Semiconductor Analysis teardown reports confirming the presence of patented features in Lumicore's accused products; market research reports; and internal competitive intelligence analyses.
C. Theory 2: Reasonable Royalty (Georgia-Pacific Analysis)
To the extent OWS cannot demonstrate lost profits for all accused-product sales — specifically, for sales to customers that OWS could not have served due to lack of a pre-existing customer relationship, geographic limitations, or other factors — OWS seeks a reasonable royalty on those sales under the framework established in Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970).
Hypothetical Negotiation Date: Q2 2022, immediately prior to Lumicore's launch of the first accused product (the LumiLink 400G-ZR+).
Reasonable-Royalty Base: The non-lost-profit portion of Lumicore's accused-product revenue, calculated as total accused-product revenue minus the portion attributable to OWS's lost-profit claim:
$714.6 million − ($714.6 million × 38.2%) = approximately $441.6 million
Proposed Royalty Rate: Based on a comprehensive analysis of the fifteen Georgia-Pacific factors and the comparable license evidence described below, OWS proposes a reasonable royalty rate of 8.5% of accused-product net sales.
Reasonable-Royalty Damages Estimate:
$441.6 million × 8.5% ≈ $37.5 million
Comparable Licenses Supporting the 8.5% Rate:
The proposed 8.5% royalty rate is supported by the following comparable license agreements, each involving the same or closely related patented technology in the silicon-photonics transceiver field:
• OWS-Terralink Semiconductor license (2020): 6.5% running royalty on approximately $45 million in licensed revenue. This license involved two of the four asserted patents and a narrower product scope.
• OWS-NovaWave Corp. license (2021): 9.0% running royalty on approximately $22 million in licensed revenue. This license involved three of the four asserted patents and covered a broader range of products.
• OWS-Helix Integrated Photonics license (2022): 7.75% running royalty plus a $2.5 million upfront payment on approximately $68 million in licensed revenue. This license involved all four asserted patents.
• Industry comparable — Stratos Photonics v. ArcLight Systems (2019): 8.0% running royalty, agreed in settlement of patent infringement litigation involving related silicon-photonics technology.
• Industry comparable — Coreline Technologies v. Prisma Semiconductor (2021): 10.2% effective royalty rate, established in a cross-license agreement covering a portfolio of silicon-photonics patents.
The silicon-photonics industry licensing range for comparable patent portfolios is approximately 4.0% to 12.5%. The proposed 8.5% rate falls within the central tendency of this range and is consistent with the comparable license evidence.
Supporting Documents: Comparable license agreements listed above; OWS licensing program records; FairPoint Licensing Group licensing analysis and royalty-rate calculations; Lumicore financial data (to be obtained through discovery); industry licensing surveys and publications; and Dr. Keating's preliminary damages analysis.
D. Theory 3: Enhanced Damages for Willful Infringement
OWS seeks enhanced damages under 35 U.S.C. § 284 based on Lumicore's willful infringement of the asserted patents. Under Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), the Court has discretion to enhance damages up to three times the amount found or assessed for egregious cases of patent infringement.
Post-Notice Period: January 15, 2023 (the date of FairPoint Licensing Group's first licensing and notice letter, which provided Lumicore with actual notice of the '847, '193, and '562 Patents) through the projected trial date.
Post-Notice Lost Profits: Dr. Keating's preliminary analysis estimates that OWS's lost profits attributable to the post-notice period (January 15, 2023 through projected trial) are approximately $109.2 million.
Enhancement Multiplier Sought: OWS seeks a 2× enhancement on the post-notice lost-profits component, yielding an enhanced damages component of approximately $109.2 million (i.e., an additional $109.2 million beyond the base lost-profits figure for the post-notice period).
Basis for Willfulness:
OWS contends that Lumicore's infringement was willful based on the following evidence:
(1) FairPoint Licensing Group's January 15, 2023 notice letter put Lumicore on actual notice of the '847, '193, and '562 Patents, including detailed claim charts identifying the infringing features of the LumiLink 400G-ZR+.
(2) FairPoint Licensing Group's May 15, 2023 supplemental notice letter added the '015 Patent and expanded the identification of accused products to include the LumiLink 800G-DR8.
(3) Despite receiving actual notice of infringement, Lumicore continued to manufacture, sell, and market the accused products and launched a new accused product, the LumiEdge 1600G-LR, in Q4 2023 — after receiving both notice letters and participating in the April 20, 2023 licensing meeting.
(4) Lumicore has refused to produce the "competent legal opinions" referenced in its July 10, 2023 declination letter, raising an inference that no such opinions exist or that they are unfavorable to Lumicore.
(5) Evidence that Lumicore's engineering team reviewed OWS's published patent applications, including Published Application No. 2018/0123456 (corresponding to the '193 Patent), during the LumiLink 400G-ZR+ design phase in 2021–2022, as anticipated to be corroborated by the testimony of former Lumicore engineer Melissa Chen.
Supporting Documents: FairPoint licensing letters dated January 15, 2023 and May 15, 2023; Lumicore's February 28, 2023 response letter; records of the April 20, 2023 in-person licensing meeting; Lumicore's July 10, 2023 declination letter; Benchmark teardown reports; anticipated deposition testimony and declarations; and documents to be obtained through discovery from Lumicore.
E. Aggregate Damages Summary
The following table summarizes OWS's damages theories:
Note: The individual theory maxima, if simply summed, exceed $210 million. The complaint demand of approximately $210 million reflects OWS's blended, conservative estimate incorporating probability-weighted scenarios across the three damages theories and accounting for potential judicial limitations on recovery. Dr. Keating's expert report, due June 15, 2025, will present multiple damages scenarios with supporting analyses.
F. Additional Relief Sought
In addition to monetary damages, OWS seeks the following additional relief:
1. Permanent Injunction. A permanent injunction barring 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, and LumiEdge 1600G-LR products and any colorable imitations thereof that infringe one or more claims of the asserted patents.
2. Prejudgment Interest. Prejudgment interest on all damages awarded, calculated from the date of first infringement to the date of judgment, at such rate as the Court deems just.
3. Post-Judgment Interest. Post-judgment interest as provided by 28 U.S.C. § 1961.
4. Costs and Attorneys' Fees. In the event the Court finds this to be an exceptional case under 35 U.S.C. § 285, OWS seeks an award of reasonable attorneys' fees and costs.
IV. INSURANCE AGREEMENTS — Rule 26(a)(1)(A)(iv)
Pursuant to Federal Rule of Civil Procedure 26(a)(1)(A)(iv), OWS identifies the following insurance agreement under which an insurance business may be liable to satisfy all or part of a possible judgment in this action or to indemnify or reimburse for payments made to satisfy any such judgment: