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

JOINT MOTION FOR ENTRY OF DOCKET CONTROL ORDER

I. INTRODUCTION

Plaintiff Optiwave Semiconductor Corp. ("OWS") and Defendant Lumicore Technologies, Inc. ("Lumicore") (collectively, the "parties"), by and through their respective undersigned counsel, jointly and respectfully move this Court, pursuant to the Court's Standing Order Regarding Docket Control, for the entry of a Docket Control Order governing the schedule and management of this patent infringement action. In support of this Joint Motion, the parties state as follows.

The parties have met and conferred in good faith on multiple occasions, including by telephone conferences held on July 15, 2024, July 22, 2024, and August 2, 2024, as well as through extensive email correspondence between lead counsel. As a result of these good-faith discussions, the parties have reached agreement on the schedule set forth herein, which the parties believe will allow for the orderly, efficient, and just resolution of all claims and defenses in this action, consistent with the requirements of Federal Rule of Civil Procedure 1 and the Court's local rules and standing orders.

This action involves allegations of infringement of four United States utility patents: U.S. Patent No. 10,234,847 (the "'847 Patent"), U.S. Patent No. 10,891,193 (the "'193 Patent"), U.S. Patent No. 9,678,562 (the "'562 Patent"), and U.S. Patent No. 11,402,015 (the "'015 Patent"). These patents generally cover optical transceiver and waveguide multiplexing technologies for silicon-photonics-based data-center interconnects, including innovations related to integrated coherent receiver architectures, multi-channel wavelength division multiplexing on silicon-on-insulator substrates, and photonic integrated circuit packaging for high-bandwidth data-center networking applications.

OWS accuses three of Lumicore's product families of infringement: the LumiLink 400G-ZR+ pluggable coherent transceiver modules, the LumiLink 800G-DR8 short-reach data-center interconnect modules, and the LumiEdge 1600G-LR long-reach modules. These product families represent a significant portion of Lumicore's revenue in the data-center interconnect market segment and are sold to hyperscale cloud service providers, telecommunications carriers, and enterprise data-center operators throughout the United States and internationally.

The procedural posture of this case is as follows. OWS filed its Complaint on April 22, 2024, asserting claims of patent infringement under 35 U.S.C. § 271. Lumicore was served on May 3, 2024. Lumicore filed its Answer and Counterclaims on June 17, 2024, asserting counterclaims for declaratory judgment of non-infringement, invalidity, and unenforceability. Additionally, Lumicore filed a Motion to Transfer Venue to the Western District of Texas, Austin Division, pursuant to 28 U.S.C. § 1404(a), on June 17, 2024. This Court denied Lumicore's Motion to Transfer Venue on August 5, 2024 (Dkt. No. 28), finding that the relevant convenience factors weighed against transfer and that OWS's choice of forum was entitled to appropriate deference. With the venue issue now resolved, the parties jointly seek the entry of a Docket Control Order to govern the remainder of this litigation.

The parties anticipate that this case will require a jury trial of approximately seven (7) to ten (10) days, and OWS has made a timely jury demand in its Complaint. In light of the complexity of the technical and legal issues involved, the number of asserted patents and accused products, and the anticipated volume of discovery, the parties respectfully submit that the schedule proposed herein is reasonable and appropriate.

II. NATURE OF THE CASE

OWS is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business in San Jose, California. OWS is a fabless semiconductor company specializing in the design and development of silicon photonics chipsets for high-speed data-center interconnect applications. Since its founding in 2008, OWS has been a pioneer in developing advanced photonic integrated circuits that enable the efficient transmission of data within and between modern hyperscale data centers. OWS holds a robust intellectual property portfolio comprising 142 issued United States patents and 58 pending United States patent applications, covering a wide range of innovations in the fields of silicon photonics, integrated coherent transceivers, waveguide multiplexing, and optical packaging technologies. OWS reported fiscal year 2023 revenue of approximately $487.3 million, derived primarily from the licensing and sale of silicon photonics chipsets and intellectual property licensing arrangements with major data-center equipment manufacturers.

Lumicore is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business in Austin, Texas. Lumicore designs, manufactures, and sells optical transceiver modules and photonic integrated circuits for use in data-center interconnect, telecommunications, and enterprise networking applications. Lumicore conducted its initial public offering on the Nasdaq Stock Market in March 2022 and reported fiscal year 2023 revenue of approximately $312.6 million. Lumicore maintains research and development facilities in Austin, Texas, and Portland, Oregon, as well as manufacturing operations through contract manufacturers in Taiwan and Malaysia. Lumicore is a direct competitor of OWS in the silicon photonics data-center interconnect market.

OWS's Complaint asserts seven counts against Lumicore. Counts I through IV assert direct infringement of each of the four asserted patents, respectively, under 35 U.S.C. § 271(a). Count V asserts induced infringement under 35 U.S.C. § 271(b), alleging that Lumicore has knowingly induced its customers and end users to infringe the asserted patents by, among other things, providing technical documentation, installation guides, integration support, and application engineering assistance that instructs and encourages customers to use the accused products in an infringing manner. Count VI asserts contributory infringement under 35 U.S.C. § 271(c), alleging that certain components of the accused products are especially made or adapted for use in an infringing manner and have no substantial non-infringing uses. Count VII asserts willful infringement and requests enhanced damages under 35 U.S.C. § 284, alleging that Lumicore had actual knowledge of OWS's patents prior to the filing of this action, including through a detailed licensing presentation delivered by OWS to Lumicore's executive team on May 15, 2023, and a formal licensing offer transmitted by OWS's outside counsel on June 12, 2023. OWS also asserts infringement under the doctrine of equivalents as to certain claims of the '847 Patent and the '015 Patent.

Lumicore has asserted counterclaims seeking declaratory judgments of non-infringement as to all asserted claims, invalidity of all asserted claims under 35 U.S.C. §§ 102 and 103 in view of prior art not before the United States Patent and Trademark Office during prosecution, and unenforceability of the '193 Patent and the '562 Patent based on alleged inequitable conduct during prosecution. Specifically, Lumicore alleges that the named inventors of the '193 Patent and the '562 Patent failed to disclose material prior art references, including certain IEEE and Optical Fiber Communications Conference publications, to the Patent Office during prosecution, and that such failure constituted a deliberate decision to withhold information material to patentability with the specific intent to deceive the Patent Office.

The parties have identified fourteen (14) disputed claim construction terms across the four asserted patents. These disputed terms involve complex technical concepts relating to, among other things, waveguide architectures, multiplexing configurations, coherent receiver structures, and signal processing methodologies. The parties anticipate that claim construction will be a significant and potentially dispositive issue in this case.

OWS seeks approximately $210 million in damages, comprising both lost profits and a reasonable royalty, as well as enhanced damages for willful infringement. OWS also seeks a permanent injunction under 35 U.S.C. § 283 to prevent Lumicore's continued infringement of the asserted patents.

III. PROPOSED DOCKET CONTROL ORDER SCHEDULE

The parties jointly propose the following schedule for the management and resolution of this action. The parties submit that this schedule provides adequate time for each phase of the litigation while maintaining the case on a reasonable path toward trial.

A. Patent Local Rules Disclosures and Contentions

The following deadlines govern the exchange of initial patent contentions and the preparation of the Joint Claim Construction Statement, in accordance with the Patent Rules of Practice for the United States District Court for the Eastern District of Texas:

B. Claim Construction Briefing Schedule

The following deadlines govern the briefing and hearing on claim construction pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), and the Patent Rules of Practice for the Eastern District of Texas:

Each brief may be accompanied by supporting declarations, including declarations from technical experts, named inventors, and persons of skill in the relevant art, as well as appendices containing intrinsic evidence (including the patents, prosecution histories, and related file wrapper materials) and extrinsic evidence (including dictionaries, technical treatises, standards documents, and prior art references). All claim construction briefing shall comply with the page limitations set forth in the Court's Standing Orders unless leave is granted to exceed such limitations.

C. Fact discovery

The following deadlines govern the fact discovery phase of this action:

The parties anticipate a substantial volume of fact discovery in this action, commensurate with the complexity and significance of the issues involved. In addition to written discovery, the parties anticipate conducting approximately twelve (12) additional fact depositions beyond those already noticed or completed, plus any required depositions of corporate representatives under Federal Rule of Civil Procedure 30(b)(6). The depositions are expected to include, among others, depositions of named inventors, engineers and technical personnel involved in the design and development of the accused products, persons knowledgeable about the prosecution of the asserted patents, persons knowledgeable about the parties' licensing negotiations, and sales, marketing, and financial personnel relevant to the damages analysis.

The parties have agreed upon a detailed Electronically Stored Information ("ESI") Protocol, which was executed by counsel for both parties on August 15, 2024. The ESI Protocol specifies, among other things, the following: (i) Crestline Technologies shall serve as the document review platform for both parties; (ii) the parties shall employ a search-term methodology with iterative refinement and proportionality considerations to identify responsive ESI; (iii) source code shall be produced in native format and shall be made available for inspection at a designated secure facility pursuant to the terms of the Stipulated Protective Order; and (iv) all other documents and ESI shall be produced in TIFF format, together with associated load files containing searchable text and standard metadata fields. The ESI Protocol also addresses custodian identification, preservation obligations, de-duplication protocols, and procedures for handling inadvertent production of privileged materials under Federal Rule of Evidence 502(d).

The parties have submitted a Joint discovery Plan and Report under Federal Rule of Civil Procedure 26(f), which was filed with the Court on July 29, 2024 (Dkt. No. 24). The Joint discovery Plan and Report addresses, among other things, the subjects on which discovery may be needed, the timing and form of disclosures and discovery, privilege log commitments (including a commitment to produce privilege logs on a rolling basis as productions are made), and a phased discovery proposal under which certain categories of financial and damages-related discovery will commence following the exchange of infringement and invalidity contentions.

The parties have also agreed upon and will submit for the Court's approval a Proposed Stipulated Protective Order establishing a three-tier confidentiality framework. The three tiers are as follows: (1) "Confidential" — information that the producing party in good faith believes constitutes confidential business information, including non-public financial data, customer lists, pricing information, and technical specifications not publicly available; (2) "Highly Confidential — Attorneys' Eyes Only" — information that the producing party in good faith believes constitutes its most sensitive confidential business information, the disclosure of which to the opposing party's personnel could cause competitive harm, including strategic business plans, detailed product roadmaps, and non-public financial projections; and (3) "Highly Confidential — Source Code" — source code, hardware description language files, firmware, and related technical documentation subject to heightened protections, including limitations on the number of individuals who may access such materials and requirements for inspection at a designated secure facility. The Proposed Stipulated Protective Order will be submitted to the Court for entry on or before August 19, 2024.

D. Expert discovery

The following deadlines govern the expert discovery phase of this action:

Plaintiff anticipates serving expert reports from the following individuals:

Dr. Caroline Ashford — Technical and infringement expert. Dr. Ashford is a Professor of Electrical Engineering and Photonics at the Northfield Institute of Technology, where she directs the Advanced Photonics Integration Laboratory. Dr. Ashford holds a Ph.D. in Electrical Engineering from the Massachusetts Institute of Technology and has published over 120 peer-reviewed papers in the fields of silicon photonics, coherent optical communication, and photonic integrated circuit design. Dr. Ashford is expected to provide opinions on infringement, including claim-by-claim, limitation-by-limitation analysis of the accused products, and on the validity of the asserted patents in rebuttal of Defendant's invalidity contentions.

Dr. Lawrence Keating — Damages expert. Dr. Keating is a Managing Director at Meridian Economic Consulting Group, LLC, a nationally recognized economic consulting firm specializing in intellectual property damages analysis. Dr. Keating holds a Ph.D. in Economics from the University of Chicago and has provided damages opinions in over 80 patent infringement matters. Dr. Keating is expected to provide opinions on lost profits, reasonable royalty, and enhanced damages, including a hypothetical negotiation analysis under the Georgia-Pacific framework.

Gregory Falk — Industry expert. Mr. Falk is an independent consultant with over 25 years of experience in the silicon photonics and optical communications industry. Mr. Falk previously served as Vice President of Engineering at Solara Optics, Inc., a leading manufacturer of optical networking equipment, from 2005 to 2019. Mr. Falk is expected to provide opinions on industry background, market structure, the competitive dynamics of the data-center interconnect market, and the commercial significance of the patented technology.

Defendant anticipates serving expert reports from the following individuals:

Dr. Rajesh Sundaram — Technical and validity expert. Dr. Sundaram is a Professor of Electrical and Computer Engineering at Pacific Western University, where he holds the endowed Chair in Photonic Systems Engineering. Dr. Sundaram holds a Ph.D. in Electrical Engineering from Stanford University and has published extensively in the fields of optical transceiver design, waveguide multiplexing, and integrated photonics. Dr. Sundaram is expected to provide opinions on invalidity in view of the prior art and on non-infringement of the asserted claims.

Dr. Natasha Volkov — Damages expert. Dr. Volkov is a Partner at Pinnacle Analytics Partners LLP, a consulting firm specializing in economic and financial analysis in complex litigation. Dr. Volkov holds a Ph.D. in Economics from Columbia University and has provided damages opinions in numerous patent, antitrust, and commercial disputes. Dr. Volkov is expected to provide opinions responding to Plaintiff's damages theories and presenting Defendant's alternative damages analysis.

The parties reserve the right to designate additional experts as may be appropriate. Any rebuttal expert reports from Plaintiff on issues for which Defendant bears the burden of proof (such as invalidity and unenforceability) may be included in Plaintiff's opening expert reports served on June 15, 2025, to the extent Plaintiff is aware of the bases for Defendant's affirmative defenses and counterclaims at that time. To the extent Defendant raises new theories or relies on additional prior art in its opening expert reports, Plaintiff reserves the right to seek leave to serve supplemental rebuttal expert reports on a schedule to be determined by the Court.

E. Dispositive Motions

The following deadlines govern the filing and briefing of dispositive motions:

All dispositive motion briefing shall comply with the page limitations and formatting requirements set forth in the Court's Local Rules and Standing Orders. The parties shall meet and confer prior to the filing of any dispositive motion regarding the issues to be raised and the potential for narrowing the scope of disputed issues, consistent with the Court's expectations for efficient case management.

F. Daubert Motions

The following deadlines govern the filing and briefing of motions to exclude expert testimony under Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), and Federal Rule of Evidence 702:

The parties acknowledge that the Court may, in its discretion, schedule a hearing on any Daubert motion or may rule on such motions based on the briefing and evidentiary submissions.

G. Pre-Trial and Trial

The following deadlines govern the pre-trial and trial phases of this action:

The parties agree that a jury trial has been demanded by Plaintiff in its Complaint, and that all triable issues in this case will be tried to a jury. The parties anticipate that each side will require approximately four (4) to five (5) days of trial time for presentation of its case-in-chief and cross-examination of the opposing party's witnesses. The parties will comply with any trial time limitations set by the Court and will cooperate in the preparation of a joint pre-trial order as directed.

IV. ADDITIONAL CASE MANAGEMENT PROVISIONS

A. Supplementation of Contentions

The parties agree that infringement contentions and invalidity contentions may be supplemented upon a showing of good cause, consistent with the Patent Rules of Practice for the United States District Court for the Eastern District of Texas. The parties further agree that the obligation to supplement contentions is a continuing obligation, and that any request to amend or supplement contentions must be made promptly upon the discovery of information giving rise to the need for supplementation. The party seeking to amend or supplement shall first meet and confer with the opposing party regarding the proposed amendment or supplementation, and if agreement cannot be reached, the requesting party shall file a motion for leave to supplement with the Court, demonstrating good cause for the amendment or supplementation.

B. Protective Order

The parties will submit a jointly proposed Stipulated Protective Order for the Court's approval on or before August 19, 2024. The Proposed Stipulated Protective Order will establish the three-tier confidentiality framework described in Section III.C above. The parties have worked cooperatively to draft the Proposed Stipulated Protective Order and anticipate no disputes regarding its terms. The Proposed Stipulated Protective Order will also include provisions governing the handling of source code, including requirements for inspection at a designated secure facility, restrictions on the number of individuals who may access source code, and prohibitions on the copying or removal of source code from the inspection facility. The Proposed Stipulated Protective Order will further include provisions for the designation, challenge, and de-designation of confidential materials, as well as provisions governing the use of confidential materials at depositions, in expert reports, and in filings with the Court.

C. Inter Partes Review

The parties note that, as of the date of this filing, no inter partes review ("IPR") petitions have been filed with the United States Patent Trial and Appeal Board ("PTAB") concerning any of the four asserted patents. Lumicore has reserved the right to petition for inter partes review of one or more of the asserted patents. The statutory one-year deadline for filing an IPR petition under 35 U.S.C. § 315(b), which runs from the date the petitioner was served with a complaint alleging infringement of the patent, is approximately May 1, 2025 (one year from the date of service of the Complaint). The parties reserve their respective positions on any motion to stay this litigation in the event an IPR petition is filed and institution is granted. OWS reserves the right to oppose any stay, and Lumicore reserves the right to seek a stay under the factors articulated by this Court and by the Federal Circuit. Any motion to stay shall be filed and briefed on the regular motion schedule established by the Court's Local Rules and Standing Orders.

D. Privilege Issues

The parties are engaged in an ongoing dispute regarding the production of opinion-of-counsel letters that were referenced by Lumicore in its July 10, 2023 declination letter responding to OWS's formal licensing offer. In the declination letter, Lumicore stated that it had obtained opinions of counsel regarding the asserted patents and that, based on those opinions, Lumicore declined OWS's licensing proposal. OWS contends that Lumicore's references to these opinion letters constitute a substantive reliance on the advice of counsel that operates as a waiver of the attorney-client privilege and work product protection with respect to the specific communications referenced. Lumicore disputes that any waiver has occurred and contends that its brief reference to the existence of opinions of counsel does not constitute the type of affirmative reliance that would give rise to an implied waiver. The parties have met and conferred on this issue on multiple occasions but have been unable to reach agreement. Any motion practice on this issue will proceed on the regular motion schedule established by the Court's Local Rules and Standing Orders, and the parties anticipate that this issue may be raised by motion during the fact discovery period.

E. Depositions Completed and Anticipated

As of the date of this filing, no depositions have been taken in this action. The parties anticipate conducting depositions of fact witnesses and corporate representatives designated under Federal Rule of Civil Procedure 30(b)(6) during the fact discovery period, which closes on May 1, 2025. The parties further anticipate conducting depositions of expert witnesses during the expert discovery period, which closes on August 15, 2025.

The schedule contemplates that the following depositions, among others, may be taken during the discovery period. This list is non-exhaustive, and the parties reserve the right to notice additional depositions as warranted by the development of the case:

(a) Depositions of the named inventors of the asserted patents;

(b) Depositions of OWS's prosecution counsel for the asserted patents;

(c) Depositions of Lumicore's engineers and technical personnel involved in the design, development, testing, and manufacturing of the accused products;

(d) Depositions of Lumicore's sales, marketing, and business development personnel regarding sales of the accused products, customer relationships, and competitive dynamics;

(e) Depositions of personnel involved in the parties' licensing negotiations, including the exchange of the licensing offer and declination letter;

(f) Rule 30(b)(6) depositions of each party on topics including corporate structure, product design and development processes, financial performance, damages-related topics, document retention practices, and knowledge of the asserted patents; and

(g) Depositions of third-party witnesses, if necessary, including customers, industry participants, and prior art witnesses.

The parties will cooperate and coordinate in scheduling depositions through meet-and-confer communications and will endeavor to provide reasonable notice of deposition dates consistent with the Federal Rules of Civil Procedure and this Court's Local Rules.

F. Document Productions

The parties have agreed upon the ESI Protocol described in Section III.C above, which was executed on August 15, 2024. Consistent with the ESI Protocol and the Court's Standing Orders, each party will make rolling productions of responsive documents and ESI on a reasonable schedule throughout the fact discovery period. The parties will maintain privilege logs, updated on a rolling basis as productions are made, identifying each document or communication withheld on the basis of the attorney-client privilege, the work product doctrine, or any other applicable privilege. The parties have agreed to follow a categorical privilege log approach for certain categories of communications (such as communications between in-house counsel and outside litigation counsel created after the commencement of this litigation) and a document-by-document privilege log approach for all other withheld materials, consistent with the framework endorsed by this Court. Any disputes regarding the adequacy or timeliness of productions or privilege logs shall be addressed through the meet-and-confer and letter-brief process described in the Court's Standing Orders.

V. STATEMENT OF GOOD CAUSE

The parties submit that the proposed schedule provides adequate time for the orderly development of the factual and legal issues in this complex patent case. The complexity of this action is evidenced by, among other things, the following factors:

(a) Four asserted patents. This case involves four separate United States utility patents, each directed to distinct but related aspects of optical transceiver and waveguide multiplexing technology. The prosecution histories of these patents are extensive, and each patent contains numerous claims that must be analyzed on a claim-by-claim, limitation-by-limitation basis.

(b) Fourteen disputed claim construction terms. The parties have identified fourteen (14) claim construction terms in dispute across the four asserted patents. These disputed terms involve complex technical concepts that will require detailed briefing, expert analysis, and a hearing before the Court.

(c) Three accused product lines. OWS accuses three distinct Lumicore product families — the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR modules — of infringing the asserted patents. Each product family involves different technical architectures and configurations, requiring separate infringement analysis.

(d) Multiple damages theories. OWS asserts multiple damages theories, including lost profits, a reasonable royalty based on a hypothetical negotiation, and enhanced damages for willful infringement under 35 U.S.C. § 284. The damages analysis will require extensive financial discovery, market analysis, and expert testimony.

(e) Counterclaims for invalidity and unenforceability. Lumicore has asserted counterclaims for declaratory judgments of invalidity under 35 U.S.C. §§ 102 and 103 and unenforceability based on alleged inequitable conduct. These counterclaims raise additional factual and legal issues that must be developed through discovery and expert analysis.

(f) Anticipated volume of discovery. The parties expect substantial document productions involving technical design files, engineering specifications, hardware description language files, test data, simulation results, financial records, licensing correspondence, source code, and prosecution histories. The parties also anticipate a significant number of fact depositions and expert depositions.

The schedule accounts for each of these factors and provides a reasonable and workable timeline for the completion of each phase of the litigation. The proposed trial date of February 2, 2026, approximately twenty-two (22) months from the filing of the Complaint, is consistent with the Court's customary scheduling practices in patent cases of comparable complexity and is designed to ensure that the parties have sufficient time to develop their respective positions while also providing for the prompt resolution of this dispute.

VI. PRAYER FOR RELIEF

WHEREFORE, the parties jointly and respectfully request that this Court enter the proposed Docket Control Order attached hereto as Exhibit A, incorporating the deadlines and provisions set forth above, and grant such other and further relief as the Court deems just and proper.

VII. CERTIFICATE OF CONFERENCE

The undersigned counsel for Plaintiff Optiwave Semiconductor Corp. and Defendant Lumicore Technologies, Inc. hereby certify that they have met and conferred in good faith regarding the proposed schedule set forth in this Joint Motion and the attached proposed Docket Control Order, and that the foregoing Docket Control Order reflects the agreement of all parties. No party opposes the entry of the proposed Docket Control Order.

Respectfully submitted,

August 9, 2024

FOR PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.:

CALDERWOOD & HARKNESS LLP

By: ________

Alan Ngo Responsible Partner Texas State Bar No. (Pro Hac Vice) 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4800 Facsimile: (213) 555-4801

Email: alan.ngo@calderwoodharkness.com

Admitted pro hac vice, E.D. Tex.

Marcus Delgado Billing Partner Texas State Bar No. 08721345 California State Bar No. 298714 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4810

Email: marcus.delgado@calderwoodharkness.com

Admitted in Texas and California

Wendy Schultz Lead Associate Texas State Bar No. (Pro Hac Vice) 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4820

Email: wendy.schultz@calderwoodharkness.com

Admitted pro hac vice, E.D. Tex.

Omar Siddiqui Working Associate Texas State Bar No. (Pro Hac Vice) 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4830

Email: omar.siddiqui@calderwoodharkness.com

Admitted pro hac vice, E.D. Tex.

WHITMORE & CALLAHAN LLP (Local Counsel)

James "Jim" Callahan Local Counsel Partner Texas State Bar No. 03481290 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 555-2100 Facsimile: (903) 555-2101

Email: jcallahan@whitmorecallahan.com

Admitted in Texas; E.D. Tex.

FOR DEFENDANT LUMICORE TECHNOLOGIES, INC.:

HAWTHORNE VEGA & CRUZ LLP

By: ________

Catherine "Kate" Rourke Lead Partner Texas State Bar No. 24059871 New York State Bar No. 4892173 600 Congress Avenue, Suite 2400 Austin, Texas 78701 Telephone: (512) 555-7200 Facsimile: (512) 555-7201

Email: kate.rourke@hawthornevega.com

Admitted in Texas and New York

Darren Cho Second Chair Partner Texas State Bar No. 24087631 California State Bar No. 312490 600 Congress Avenue, Suite 2400 Austin, Texas 78701 Telephone: (512) 555-7210

Email: darren.cho@hawthornevega.com

Admitted in Texas and California

Samantha Briggs Lead Associate Texas State Bar No. 24102984 600 Congress Avenue, Suite 2400 Austin, Texas 78701 Telephone: (512) 555-7220

Email: samantha.briggs@hawthornevega.com

Admitted in Texas

Rohan Iyer Working Associate Texas State Bar No. 24115672 600 Congress Avenue, Suite 2400 Austin, Texas 78701 Telephone: (512) 555-7230

Email: rohan.iyer@hawthornevega.com

Admitted in Texas

TRASK EDDINGTON LLP (Local Counsel)

Maria Garza Local Counsel Partner Texas State Bar No. 07892431 425 East Front Street, Suite 300 Tyler, Texas 75701 Telephone: (903) 555-3400 Facsimile: (903) 555-3401

Email: mgarza@traskeddington.com

Admitted in Texas; E.D. Tex.

CERTIFICATE OF SERVICE

I hereby certify that on August 9, 2024, a true and correct copy of the foregoing Joint Motion for Entry of Docket Control Order, together with all exhibits attached thereto, was served on all counsel of record via the Court's CM/ECF electronic filing system, which will send notification of such filing to all counsel of record who have consented to electronic service.

________________________________________

Alan Ngo CALDERWOOD & HARKNESS LLP Counsel for Plaintiff Optiwave Semiconductor Corp.

EXHIBIT A

[PROPOSED] DOCKET CONTROL ORDER

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

[PROPOSED] DOCKET CONTROL ORDER

Having considered the parties' Joint Motion for Entry of Docket Control Order (Dkt. No. _), and finding good cause therefor, the Court ORDERS as follows:

1. On or before September 16, 2024, Plaintiff shall serve its P.R. 3-1 Infringement Contentions, identifying each asserted claim of each asserted patent, each accused instrumentality, and the specific basis for Plaintiff's allegation of infringement on a claim-by-claim, limitation-by-limitation basis, including any contentions under the doctrine of equivalents, together with all supporting documents and evidence required under the Patent Rules.

2. On or before October 14, 2024, Defendant shall serve its P.R. 3-3 Invalidity Contentions, identifying each item of prior art upon which Defendant relies for its contentions of invalidity and providing claim charts identifying where in the prior art each limitation of each asserted claim is found, together with all supporting documents and evidence required under the Patent Rules.

3. On or before October 28, 2024, the parties shall jointly prepare and file a Joint Claim Construction Statement identifying all disputed claim terms, each party's proposed construction for each disputed term, any terms upon which the parties agree, and the intrinsic and extrinsic evidence upon which each party relies.

4. On or before November 15, 2024, Plaintiff shall file its Opening Claim Construction Brief, together with any supporting declarations and appendices.

5. On or before December 6, 2024, Defendant shall file its Responsive Claim Construction Brief, together with any supporting declarations and appendices.

6. On or before December 20, 2024, Plaintiff shall file its Reply Claim Construction Brief, together with any supporting declarations and appendices.

7. On or before January 10, 2025, Defendant may file a Sur-Reply Claim Construction Brief, if permitted by leave of Court. Any request for leave to file a sur-reply shall be made by separate motion.

8. On or before January 15, 2025, the parties shall file a final Joint Claim Construction Chart reflecting each party's final proposed constructions for all disputed terms.

9. In February 2025, the parties shall submit Claim Construction Tutorial materials, including tutorial presentations, demonstrative exhibits, and tutorial declarations. The exact date for submission shall be set by the Court by separate order.

10. A Markman Hearing on claim construction shall be held on March 14, 2025, at a time to be designated by the Court.

11. The close of fact discovery shall be May 1, 2025. All fact depositions, responses to written discovery, and document productions shall be completed by this date. Initial Disclosures under Federal Rule of Civil Procedure 26(a)(1) shall be served on or before August 19, 2024. Written discovery may be served beginning August 26, 2024.

12. On or before June 15, 2025, Plaintiff shall serve its opening expert reports on all issues for which Plaintiff bears the burden of proof, including infringement, validity rebuttal, damages, willfulness, and industry background.

13. On or before July 15, 2025, Defendant shall serve its rebuttal expert reports and its opening expert reports on all issues for which Defendant bears the burden of proof, including invalidity, unenforceability, non-infringement rebuttal, and damages rebuttal.

14. The close of expert discovery shall be August 15, 2025. All expert depositions shall be completed by this date.

15. On or before September 15, 2025, the parties shall file any dispositive motions, including motions for summary judgment or partial summary judgment. Responses shall be due on or before October 15, 2025. Replies shall be due on or before November 1, 2025.

16. On or before November 1, 2025, the parties shall file any Daubert motions to exclude expert testimony. Responses shall be due on or before December 1, 2025. Replies shall be due on or before December 15, 2025.

17. In December 2025, the parties shall file Proposed Jury Instructions, Proposed Verdict Forms, Witness Lists, and Exhibit Lists. The exact date shall be set by the Court by separate order.

18. In January 2026, the parties shall file Motions in Limine and Deposition Designation and Counter-Designation Charts. The exact dates shall be set by the Court by separate order.

19. A Pre-Trial Conference shall be held on January 5, 2026, at a time to be designated by the Court.

20. A Jury Trial shall commence on February 2, 2026. The estimated duration of trial is seven (7) to ten (10) days.

ADDITIONAL PROVISIONS:

21. Modification of Schedule. The schedule set forth in this Docket Control Order shall not be modified except upon joint motion of the parties demonstrating good cause for the requested modification, or by order of the Court. The parties are reminded that the Court expects strict adherence to the deadlines set forth in this Order and that extensions will be granted only in exceptional circumstances.

22. Protective Order. The parties shall submit a jointly proposed Stipulated Protective Order for entry by the Court on or before August 19, 2024.

23. discovery Disputes. All discovery disputes shall be presented first through a good-faith meet-and-confer between counsel. If the parties are unable to resolve a discovery dispute through meet-and-confer, the aggrieved party shall submit a joint letter to the Court, not to exceed five (5) pages per side, setting forth the nature of the dispute, each party's position, and the relief sought, consistent with the Court's Standing Orders Regarding discovery Disputes. No formal discovery motion shall be filed without prior leave of Court or unless the Court directs otherwise after review of the joint letter submission.

24. Joint Status Reports. The parties shall confer and provide joint status reports as directed by the Court. The first joint status report shall be due on a date to be set by the Court. Joint status reports shall address, at a minimum, the status of discovery, any outstanding disputes, the status of any settlement discussions (without disclosing the substance of such discussions), and any other matters that the parties wish to bring to the Court's attention.

25. Supplementation of Contentions. Infringement contentions and invalidity contentions may be supplemented upon a showing of good cause, consistent with the Patent Rules of Practice for the Eastern District of Texas.

26. Compliance with Local Rules and Standing Orders. All proceedings in this case shall comply with the Local Rules of the Eastern District of Texas, the Patent Rules of Practice, and the Court's Standing Orders, except as modified by this Docket Control Order.

SO ORDERED this _ day of ____, 2024.

________________________________________

HONORABLE JAMES R. GILSTRAP UNITED STATES DISTRICT JUDGE

OPTIWAVE SEMICONDUCTOR CORP.,

<!-- indent:1 -->Plaintiff,<!-- /indent -->	§
§	Case No. 2:24-cv-00319-JRG
v.	§
§	Judge James R. Gilstrap
LUMICORE TECHNOLOGIES, INC.,	§

<!-- indent:1 -->Defendant.<!-- /indent -->	§
Deadline	Event
September 16, 2024	Plaintiff's P.R. 3-1 Infringement Contentions due. Plaintiff shall identify each asserted claim of each asserted patent, each accused instrumentality (including each accused product, process, method, system, or apparatus), and the specific basis for Plaintiff's allegation of infringement on a claim-by-claim, limitation-by-limitation basis, with reference to the structure, operation, and functionality of each accused instrumentality. Plaintiff's Infringement Contentions shall also separately identify any contentions of infringement under the doctrine of equivalents, specifying the function, way, and result for each limitation as to which equivalents are asserted. Plaintiff shall also produce or make available for inspection documents sufficient to show the operation of each accused instrumentality in the manner that Plaintiff contends constitutes infringement.
October 14, 2024	Defendant's P.R. 3-3 Invalidity Contentions due. Defendant shall identify each item of prior art upon which Defendant relies for its contentions of invalidity, including prior art patents, prior art printed publications, prior public use or sale, and any other prior art under 35 U.S.C. §§ 102 and 103. For each item of prior art, Defendant shall provide a chart identifying where in the prior art each limitation of each asserted claim is found, on a claim-by-claim, limitation-by-limitation basis. Defendant shall also identify any grounds for invalidity under 35 U.S.C. § 112. Defendant shall produce or make available for inspection all prior art references upon which Defendant relies.
October 28, 2024	Joint Claim Construction Statement due. The parties shall jointly prepare and file a Joint Claim Construction Statement that identifies: (i) each claim term, phrase, or clause that any party contends should be construed by the Court; (ii) each party's proposed construction for each disputed term; (iii) any terms upon which the parties have agreed as to construction; and (iv) the intrinsic and extrinsic evidence upon which each party relies in support of its proposed construction. The Joint Claim Construction Statement shall also include a brief identification of the relevance of each disputed term to the issues of infringement, validity, or enforceability.
Deadline	Event
November 15, 2024	Plaintiff's (OWS's) Opening Claim Construction Brief due. Plaintiff's brief shall address each disputed claim term identified in the Joint Claim Construction Statement and shall present Plaintiff's proposed construction with supporting analysis of the intrinsic record (including the claim language, specification, and prosecution history) and any relevant extrinsic evidence.
December 6, 2024	Defendant's (Lumicore's) Responsive Claim Construction Brief due. Defendant's brief shall respond to Plaintiff's proposed constructions and present Defendant's own proposed constructions with supporting analysis.
December 20, 2024	Plaintiff's Reply Claim Construction Brief due. Plaintiff may address arguments raised in Defendant's Responsive Brief and may submit additional evidence in response to arguments or evidence raised for the first time in Defendant's Responsive Brief.
January 10, 2025	Defendant's Sur-Reply Claim Construction Brief due, if permitted by leave of the Court. The parties agree that Defendant may seek leave to file a sur-reply, and that the appropriateness of any such filing shall be determined by the Court.
January 15, 2025	Joint Claim Construction Chart (final version) due. The parties shall submit a final, updated version of the Joint Claim Construction Chart reflecting any revisions or clarifications to the parties' proposed constructions that have occurred during the briefing process.
February 2025	Claim Construction Tutorial Submissions due. The exact date shall be set by the Court. Each party may submit technology tutorial materials, including demonstrative presentations, technical diagrams, and tutorial declarations, to assist the Court in understanding the technical subject matter of the asserted patents and the disputed claim terms.
March 14, 2025	Markman Hearing. The Court will conduct a hearing on claim construction. The parties anticipate that the hearing will require approximately one full day, given the number of disputed terms and the complexity of the underlying technology.
Deadline	Event
August 19, 2024	Initial Disclosures under Federal Rule of Civil Procedure 26(a)(1) due. Each party shall serve its Initial Disclosures identifying: (i) persons likely to have discoverable information that the disclosing party may use to support its claims or defenses; (ii) a copy or description of documents, electronically stored information, and tangible things in the disclosing party's possession, custody, or control; (iii) a computation of damages; and (iv) insurance agreements.
August 26, 2024	First set of written discovery may be served. Written discovery includes interrogatories under Federal Rule of Civil Procedure 33, requests for production of documents and electronically stored information under Federal Rule of Civil Procedure 34, and requests for admission under Federal Rule of Civil Procedure 36.
May 1, 2025	Close of Fact discovery. All fact discovery, including depositions of fact witnesses, responses to written discovery, and document productions, shall be completed by this date. Any disputes regarding fact discovery must be raised with the Court in sufficient time to allow resolution prior to this deadline.
Deadline	Event
June 15, 2025	Plaintiff's Expert Reports due. Plaintiff shall serve opening expert reports on all issues for which Plaintiff bears the burden of proof, including infringement (direct, induced, and contributory), rebuttal of invalidity defenses, damages (both lost profits and reasonable royalty), willfulness, and industry background.
July 15, 2025	Defendant's Rebuttal Expert Reports due. Defendant shall serve rebuttal expert reports, as well as opening expert reports on all issues for which Defendant bears the burden of proof, including invalidity, unenforceability, non-infringement rebuttal, and damages rebuttal.
August 15, 2025	Close of Expert discovery. All expert depositions shall be completed by this date. Each party shall make its expert witnesses available for deposition at a mutually convenient time and location during the expert discovery period.
Deadline	Event
September 15, 2025	Dispositive Motions due. Any party may file motions for summary judgment or partial summary judgment under Federal Rule of Civil Procedure 56 on any issue, including infringement, non-infringement, invalidity, unenforceability, damages, willfulness, or any other issue appropriate for summary adjudication.
October 15, 2025	Responses to Dispositive Motions due. The non-moving party shall file its response brief, together with any supporting evidence, declarations, and appendices.
November 1, 2025	Replies in Support of Dispositive Motions due. The moving party may file a reply brief addressing arguments raised in the non-moving party's response.

Deadline	Event
November 1, 2025	Daubert Motions due. Any party may file motions to exclude all or a portion of the testimony of any opposing expert witness on the grounds that such testimony does not satisfy the requirements of Federal Rule of Evidence 702 and the Daubert reliability framework.
December 1, 2025	Responses to Daubert Motions due.
December 15, 2025	Replies in Support of Daubert Motions due.
Deadline	Event
December 2025	Proposed Jury Instructions, Proposed Verdict Form, Witness Lists, and Exhibit Lists due. The exact date shall be set by the Court. Each party shall submit proposed jury instructions and a proposed verdict form, as well as a final list of witnesses it intends to call at trial and a list of exhibits it intends to offer into evidence.
January 2026	Motions in Limine due. Deposition Designation and Counter-Designation Charts due. The exact dates shall be set by the Court. Each party shall file any motions in limine seeking to exclude or limit evidence at trial. The parties shall also exchange and file deposition designation and counter-designation charts identifying portions of deposition testimony to be presented at trial.
January 5, 2026	Pre-Trial Conference. The Court will conduct a final pre-trial conference to address any outstanding pre-trial issues, including the resolution of motions in limine, the finalization of jury instructions and the verdict form, and any other matters necessary for the efficient conduct of trial.
February 2, 2026	Jury Trial. Trial shall commence on this date before a jury. The estimated duration of trial is seven (7) to ten (10) days.
OPTIWAVE SEMICONDUCTOR CORP.,	§

<!-- indent:1 -->Plaintiff,<!-- /indent -->	§
§	Case No. 2:24-cv-00319-JRG
v.	§
§	Judge James R. Gilstrap
LUMICORE TECHNOLOGIES, INC.,	§

Defendant.

UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
JOINT MOTION FOR ENTRY OF DOCKET CONTROL ORDER
I. INTRODUCTION
Plaintiff Optiwave Semiconductor Corp. ("OWS") and Defendant Lumicore Technologies, Inc. ("Lumicore") (collectively, the "parties"), by and through their respective undersigned counsel, jointly and respectfully move this Court, pursuant to the Court's Standing Order Regarding Docket Control, for the entry of a Docket Control Order governing the schedule and management of this patent infringement action. In support of this Joint Motion, the parties state as follows.
The parties have met and conferred in good faith on multiple occasions, including by telephone conferences held on July 15, 2024, July 22, 2024, and August 2, 2024, as well as through extensive email correspondence between lead counsel. As a result of these good-faith discussions, the parties have reached agreement on the schedule set forth herein, which the parties believe will allow for the orderly, efficient, and just resolution of all claims and defenses in this action, consistent with the requirements of Federal Rule of Civil Procedure 1 and the Court's local rules and standing orders.
This action involves allegations of infringement of four United States utility patents: U.S. Patent No. 10,234,847 (the "'847 Patent"), U.S. Patent No. 10,891,193 (the "'193 Patent"), U.S. Patent No. 9,678,562 (the "'562 Patent"), and U.S. Patent No. 11,402,015 (the "'015 Patent"). These patents generally cover optical transceiver and waveguide multiplexing technologies for silicon-photonics-based data-center interconnects, including innovations related to integrated coherent receiver architectures, multi-channel wavelength division multiplexing on silicon-on-insulator substrates, and photonic integrated circuit packaging for high-bandwidth data-center networking applications.
OWS accuses three of Lumicore's product families of infringement: the LumiLink 400G-ZR+ pluggable coherent transceiver modules, the LumiLink 800G-DR8 short-reach data-center interconnect modules, and the LumiEdge 1600G-LR long-reach modules. These product families represent a significant portion of Lumicore's revenue in the data-center interconnect market segment and are sold to hyperscale cloud service providers, telecommunications carriers, and enterprise data-center operators throughout the United States and internationally.
The procedural posture of this case is as follows. OWS filed its Complaint on April 22, 2024, asserting claims of patent infringement under 35 U.S.C. § 271. Lumicore was served on May 3, 2024. Lumicore filed its Answer and Counterclaims on June 17, 2024, asserting counterclaims for declaratory judgment of non-infringement, invalidity, and unenforceability. Additionally, Lumicore filed a Motion to Transfer Venue to the Western District of Texas, Austin Division, pursuant to 28 U.S.C. § 1404(a), on June 17, 2024. This Court denied Lumicore's Motion to Transfer Venue on August 5, 2024 (Dkt. No. 28), finding that the relevant convenience factors weighed against transfer and that OWS's choice of forum was entitled to appropriate deference. With the venue issue now resolved, the parties jointly seek the entry of a Docket Control Order to govern the remainder of this litigation.
The parties anticipate that this case will require a jury trial of approximately seven (7) to ten (10) days, and OWS has made a timely jury demand in its Complaint. In light of the complexity of the technical and legal issues involved, the number of asserted patents and accused products, and the anticipated volume of discovery, the parties respectfully submit that the schedule proposed herein is reasonable and appropriate.
II. NATURE OF THE CASE
OWS is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business in San Jose, California. OWS is a fabless semiconductor company specializing in the design and development of silicon photonics chipsets for high-speed data-center interconnect applications. Since its founding in 2008, OWS has been a pioneer in developing advanced photonic integrated circuits that enable the efficient transmission of data within and between modern hyperscale data centers. OWS holds a robust intellectual property portfolio comprising 142 issued United States patents and 58 pending United States patent applications, covering a wide range of innovations in the fields of silicon photonics, integrated coherent transceivers, waveguide multiplexing, and optical packaging technologies. OWS reported fiscal year 2023 revenue of approximately $487.3 million, derived primarily from the licensing and sale of silicon photonics chipsets and intellectual property licensing arrangements with major data-center equipment manufacturers.
Lumicore is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business in Austin, Texas. Lumicore designs, manufactures, and sells optical transceiver modules and photonic integrated circuits for use in data-center interconnect, telecommunications, and enterprise networking applications. Lumicore conducted its initial public offering on the Nasdaq Stock Market in March 2022 and reported fiscal year 2023 revenue of approximately $312.6 million. Lumicore maintains research and development facilities in Austin, Texas, and Portland, Oregon, as well as manufacturing operations through contract manufacturers in Taiwan and Malaysia. Lumicore is a direct competitor of OWS in the silicon photonics data-center interconnect market.
OWS's Complaint asserts seven counts against Lumicore. Counts I through IV assert direct infringement of each of the four asserted patents, respectively, under 35 U.S.C. § 271(a). Count V asserts induced infringement under 35 U.S.C. § 271(b), alleging that Lumicore has knowingly induced its customers and end users to infringe the asserted patents by, among other things, providing technical documentation, installation guides, integration support, and application engineering assistance that instructs and encourages customers to use the accused products in an infringing manner. Count VI asserts contributory infringement under 35 U.S.C. § 271(c), alleging that certain components of the accused products are especially made or adapted for use in an infringing manner and have no substantial non-infringing uses. Count VII asserts willful infringement and requests enhanced damages under 35 U.S.C. § 284, alleging that Lumicore had actual knowledge of OWS's patents prior to the filing of this action, including through a detailed licensing presentation delivered by OWS to Lumicore's executive team on May 15, 2023, and a formal licensing offer transmitted by OWS's outside counsel on June 12, 2023. OWS also asserts infringement under the doctrine of equivalents as to certain claims of the '847 Patent and the '015 Patent.
Lumicore has asserted counterclaims seeking declaratory judgments of non-infringement as to all asserted claims, invalidity of all asserted claims under 35 U.S.C. §§ 102 and 103 in view of prior art not before the United States Patent and Trademark Office during prosecution, and unenforceability of the '193 Patent and the '562 Patent based on alleged inequitable conduct during prosecution. Specifically, Lumicore alleges that the named inventors of the '193 Patent and the '562 Patent failed to disclose material prior art references, including certain IEEE and Optical Fiber Communications Conference publications, to the Patent Office during prosecution, and that such failure constituted a deliberate decision to withhold information material to patentability with the specific intent to deceive the Patent Office.
The parties have identified fourteen (14) disputed claim construction terms across the four asserted patents. These disputed terms involve complex technical concepts relating to, among other things, waveguide architectures, multiplexing configurations, coherent receiver structures, and signal processing methodologies. The parties anticipate that claim construction will be a significant and potentially dispositive issue in this case.
OWS seeks approximately $210 million in damages, comprising both lost profits and a reasonable royalty, as well as enhanced damages for willful infringement. OWS also seeks a permanent injunction under 35 U.S.C. § 283 to prevent Lumicore's continued infringement of the asserted patents.
III. PROPOSED DOCKET CONTROL ORDER SCHEDULE
The parties jointly propose the following schedule for the management and resolution of this action. The parties submit that this schedule provides adequate time for each phase of the litigation while maintaining the case on a reasonable path toward trial.
A. Patent Local Rules Disclosures and Contentions
The following deadlines govern the exchange of initial patent contentions and the preparation of the Joint Claim Construction Statement, in accordance with the Patent Rules of Practice for the United States District Court for the Eastern District of Texas:
B. Claim Construction Briefing Schedule
The following deadlines govern the briefing and hearing on claim construction pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), and the Patent Rules of Practice for the Eastern District of Texas:
Each brief may be accompanied by supporting declarations, including declarations from technical experts, named inventors, and persons of skill in the relevant art, as well as appendices containing intrinsic evidence (including the patents, prosecution histories, and related file wrapper materials) and extrinsic evidence (including dictionaries, technical treatises, standards documents, and prior art references). All claim construction briefing shall comply with the page limitations set forth in the Court's Standing Orders unless leave is granted to exceed such limitations.
C. Fact discovery
The following deadlines govern the fact discovery phase of this action:
The parties anticipate a substantial volume of fact discovery in this action, commensurate with the complexity and significance of the issues involved. In addition to written discovery, the parties anticipate conducting approximately twelve (12) additional fact depositions beyond those already noticed or completed, plus any required depositions of corporate representatives under Federal Rule of Civil Procedure 30(b)(6). The depositions are expected to include, among others, depositions of named inventors, engineers and technical personnel involved in the design and development of the accused products, persons knowledgeable about the prosecution of the asserted patents, persons knowledgeable about the parties' licensing negotiations, and sales, marketing, and financial personnel relevant to the damages analysis.
The parties have agreed upon a detailed Electronically Stored Information ("ESI") Protocol, which was executed by counsel for both parties on August 15, 2024. The ESI Protocol specifies, among other things, the following: (i) Crestline Technologies shall serve as the document review platform for both parties; (ii) the parties shall employ a search-term methodology with iterative refinement and proportionality considerations to identify responsive ESI; (iii) source code shall be produced in native format and shall be made available for inspection at a designated secure facility pursuant to the terms of the Stipulated Protective Order; and (iv) all other documents and ESI shall be produced in TIFF format, together with associated load files containing searchable text and standard metadata fields. The ESI Protocol also addresses custodian identification, preservation obligations, de-duplication protocols, and procedures for handling inadvertent production of privileged materials under Federal Rule of Evidence 502(d).
The parties have submitted a Joint discovery Plan and Report under Federal Rule of Civil Procedure 26(f), which was filed with the Court on July 29, 2024 (Dkt. No. 24). The Joint discovery Plan and Report addresses, among other things, the subjects on which discovery may be needed, the timing and form of disclosures and discovery, privilege log commitments (including a commitment to produce privilege logs on a rolling basis as productions are made), and a phased discovery proposal under which certain categories of financial and damages-related discovery will commence following the exchange of infringement and invalidity contentions.
The parties have also agreed upon and will submit for the Court's approval a Proposed Stipulated Protective Order establishing a three-tier confidentiality framework. The three tiers are as follows: (1) "Confidential" — information that the producing party in good faith believes constitutes confidential business information, including non-public financial data, customer lists, pricing information, and technical specifications not publicly available; (2) "Highly Confidential — Attorneys' Eyes Only" — information that the producing party in good faith believes constitutes its most sensitive confidential business information, the disclosure of which to the opposing party's personnel could cause competitive harm, including strategic business plans, detailed product roadmaps, and non-public financial projections; and (3) "Highly Confidential — Source Code" — source code, hardware description language files, firmware, and related technical documentation subject to heightened protections, including limitations on the number of individuals who may access such materials and requirements for inspection at a designated secure facility. The Proposed Stipulated Protective Order will be submitted to the Court for entry on or before August 19, 2024.
D. Expert discovery
The following deadlines govern the expert discovery phase of this action:
Plaintiff anticipates serving expert reports from the following individuals:
Dr. Caroline Ashford — Technical and infringement expert. Dr. Ashford is a Professor of Electrical Engineering and Photonics at the Northfield Institute of Technology, where she directs the Advanced Photonics Integration Laboratory. Dr. Ashford holds a Ph.D. in Electrical Engineering from the Massachusetts Institute of Technology and has published over 120 peer-reviewed papers in the fields of silicon photonics, coherent optical communication, and photonic integrated circuit design. Dr. Ashford is expected to provide opinions on infringement, including claim-by-claim, limitation-by-limitation analysis of the accused products, and on the validity of the asserted patents in rebuttal of Defendant's invalidity contentions.
Dr. Lawrence Keating — Damages expert. Dr. Keating is a Managing Director at Meridian Economic Consulting Group, LLC, a nationally recognized economic consulting firm specializing in intellectual property damages analysis. Dr. Keating holds a Ph.D. in Economics from the University of Chicago and has provided damages opinions in over 80 patent infringement matters. Dr. Keating is expected to provide opinions on lost profits, reasonable royalty, and enhanced damages, including a hypothetical negotiation analysis under the Georgia-Pacific framework.
Gregory Falk — Industry expert. Mr. Falk is an independent consultant with over 25 years of experience in the silicon photonics and optical communications industry. Mr. Falk previously served as Vice President of Engineering at Solara Optics, Inc., a leading manufacturer of optical networking equipment, from 2005 to 2019. Mr. Falk is expected to provide opinions on industry background, market structure, the competitive dynamics of the data-center interconnect market, and the commercial significance of the patented technology.
Defendant anticipates serving expert reports from the following individuals:
Dr. Rajesh Sundaram — Technical and validity expert. Dr. Sundaram is a Professor of Electrical and Computer Engineering at Pacific Western University, where he holds the endowed Chair in Photonic Systems Engineering. Dr. Sundaram holds a Ph.D. in Electrical Engineering from Stanford University and has published extensively in the fields of optical transceiver design, waveguide multiplexing, and integrated photonics. Dr. Sundaram is expected to provide opinions on invalidity in view of the prior art and on non-infringement of the asserted claims.
Dr. Natasha Volkov — Damages expert. Dr. Volkov is a Partner at Pinnacle Analytics Partners LLP, a consulting firm specializing in economic and financial analysis in complex litigation. Dr. Volkov holds a Ph.D. in Economics from Columbia University and has provided damages opinions in numerous patent, antitrust, and commercial disputes. Dr. Volkov is expected to provide opinions responding to Plaintiff's damages theories and presenting Defendant's alternative damages analysis.
The parties reserve the right to designate additional experts as may be appropriate. Any rebuttal expert reports from Plaintiff on issues for which Defendant bears the burden of proof (such as invalidity and unenforceability) may be included in Plaintiff's opening expert reports served on June 15, 2025, to the extent Plaintiff is aware of the bases for Defendant's affirmative defenses and counterclaims at that time. To the extent Defendant raises new theories or relies on additional prior art in its opening expert reports, Plaintiff reserves the right to seek leave to serve supplemental rebuttal expert reports on a schedule to be determined by the Court.
E. Dispositive Motions
The following deadlines govern the filing and briefing of dispositive motions:
All dispositive motion briefing shall comply with the page limitations and formatting requirements set forth in the Court's Local Rules and Standing Orders. The parties shall meet and confer prior to the filing of any dispositive motion regarding the issues to be raised and the potential for narrowing the scope of disputed issues, consistent with the Court's expectations for efficient case management.
F. Daubert Motions
The following deadlines govern the filing and briefing of motions to exclude expert testimony under Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), and Federal Rule of Evidence 702:
The parties acknowledge that the Court may, in its discretion, schedule a hearing on any Daubert motion or may rule on such motions based on the briefing and evidentiary submissions.
G. Pre-Trial and Trial
The following deadlines govern the pre-trial and trial phases of this action:
The parties agree that a jury trial has been demanded by Plaintiff in its Complaint, and that all triable issues in this case will be tried to a jury. The parties anticipate that each side will require approximately four (4) to five (5) days of trial time for presentation of its case-in-chief and cross-examination of the opposing party's witnesses. The parties will comply with any trial time limitations set by the Court and will cooperate in the preparation of a joint pre-trial order as directed.
IV. ADDITIONAL CASE MANAGEMENT PROVISIONS
A. Supplementation of Contentions
The parties agree that infringement contentions and invalidity contentions may be supplemented upon a showing of good cause, consistent with the Patent Rules of Practice for the United States District Court for the Eastern District of Texas. The parties further agree that the obligation to supplement contentions is a continuing obligation, and that any request to amend or supplement contentions must be made promptly upon the discovery of information giving rise to the need for supplementation. The party seeking to amend or supplement shall first meet and confer with the opposing party regarding the proposed amendment or supplementation, and if agreement cannot be reached, the requesting party shall file a motion for leave to supplement with the Court, demonstrating good cause for the amendment or supplementation.
B. Protective Order
The parties will submit a jointly proposed Stipulated Protective Order for the Court's approval on or before August 19, 2024. The Proposed Stipulated Protective Order will establish the three-tier confidentiality framework described in Section III.C above. The parties have worked cooperatively to draft the Proposed Stipulated Protective Order and anticipate no disputes regarding its terms. The Proposed Stipulated Protective Order will also include provisions governing the handling of source code, including requirements for inspection at a designated secure facility, restrictions on the number of individuals who may access source code, and prohibitions on the copying or removal of source code from the inspection facility. The Proposed Stipulated Protective Order will further include provisions for the designation, challenge, and de-designation of confidential materials, as well as provisions governing the use of confidential materials at depositions, in expert reports, and in filings with the Court.
C. Inter Partes Review
The parties note that, as of the date of this filing, no inter partes review ("IPR") petitions have been filed with the United States Patent Trial and Appeal Board ("PTAB") concerning any of the four asserted patents. Lumicore has reserved the right to petition for inter partes review of one or more of the asserted patents. The statutory one-year deadline for filing an IPR petition under 35 U.S.C. § 315(b), which runs from the date the petitioner was served with a complaint alleging infringement of the patent, is approximately May 1, 2025 (one year from the date of service of the Complaint). The parties reserve their respective positions on any motion to stay this litigation in the event an IPR petition is filed and institution is granted. OWS reserves the right to oppose any stay, and Lumicore reserves the right to seek a stay under the factors articulated by this Court and by the Federal Circuit. Any motion to stay shall be filed and briefed on the regular motion schedule established by the Court's Local Rules and Standing Orders.
D. Privilege Issues
The parties are engaged in an ongoing dispute regarding the production of opinion-of-counsel letters that were referenced by Lumicore in its July 10, 2023 declination letter responding to OWS's formal licensing offer. In the declination letter, Lumicore stated that it had obtained opinions of counsel regarding the asserted patents and that, based on those opinions, Lumicore declined OWS's licensing proposal. OWS contends that Lumicore's references to these opinion letters constitute a substantive reliance on the advice of counsel that operates as a waiver of the attorney-client privilege and work product protection with respect to the specific communications referenced. Lumicore disputes that any waiver has occurred and contends that its brief reference to the existence of opinions of counsel does not constitute the type of affirmative reliance that would give rise to an implied waiver. The parties have met and conferred on this issue on multiple occasions but have been unable to reach agreement. Any motion practice on this issue will proceed on the regular motion schedule established by the Court's Local Rules and Standing Orders, and the parties anticipate that this issue may be raised by motion during the fact discovery period.
E. Depositions Completed and Anticipated
As of the date of this filing, no depositions have been taken in this action. The parties anticipate conducting depositions of fact witnesses and corporate representatives designated under Federal Rule of Civil Procedure 30(b)(6) during the fact discovery period, which closes on May 1, 2025. The parties further anticipate conducting depositions of expert witnesses during the expert discovery period, which closes on August 15, 2025.
The schedule contemplates that the following depositions, among others, may be taken during the discovery period. This list is non-exhaustive, and the parties reserve the right to notice additional depositions as warranted by the development of the case:
(a) Depositions of the named inventors of the asserted patents;
(b) Depositions of OWS's prosecution counsel for the asserted patents;
(c) Depositions of Lumicore's engineers and technical personnel involved in the design, development, testing, and manufacturing of the accused products;
(d) Depositions of Lumicore's sales, marketing, and business development personnel regarding sales of the accused products, customer relationships, and competitive dynamics;
(e) Depositions of personnel involved in the parties' licensing negotiations, including the exchange of the licensing offer and declination letter;
(f) Rule 30(b)(6) depositions of each party on topics including corporate structure, product design and development processes, financial performance, damages-related topics, document retention practices, and knowledge of the asserted patents; and
(g) Depositions of third-party witnesses, if necessary, including customers, industry participants, and prior art witnesses.
The parties will cooperate and coordinate in scheduling depositions through meet-and-confer communications and will endeavor to provide reasonable notice of deposition dates consistent with the Federal Rules of Civil Procedure and this Court's Local Rules.
F. Document Productions
The parties have agreed upon the ESI Protocol described in Section III.C above, which was executed on August 15, 2024. Consistent with the ESI Protocol and the Court's Standing Orders, each party will make rolling productions of responsive documents and ESI on a reasonable schedule throughout the fact discovery period. The parties will maintain privilege logs, updated on a rolling basis as productions are made, identifying each document or communication withheld on the basis of the attorney-client privilege, the work product doctrine, or any other applicable privilege. The parties have agreed to follow a categorical privilege log approach for certain categories of communications (such as communications between in-house counsel and outside litigation counsel created after the commencement of this litigation) and a document-by-document privilege log approach for all other withheld materials, consistent with the framework endorsed by this Court. Any disputes regarding the adequacy or timeliness of productions or privilege logs shall be addressed through the meet-and-confer and letter-brief process described in the Court's Standing Orders.
V. STATEMENT OF GOOD CAUSE
The parties submit that the proposed schedule provides adequate time for the orderly development of the factual and legal issues in this complex patent case. The complexity of this action is evidenced by, among other things, the following factors:
(a) Four asserted patents. This case involves four separate United States utility patents, each directed to distinct but related aspects of optical transceiver and waveguide multiplexing technology. The prosecution histories of these patents are extensive, and each patent contains numerous claims that must be analyzed on a claim-by-claim, limitation-by-limitation basis.
(b) Fourteen disputed claim construction terms. The parties have identified fourteen (14) claim construction terms in dispute across the four asserted patents. These disputed terms involve complex technical concepts that will require detailed briefing, expert analysis, and a hearing before the Court.
(c) Three accused product lines. OWS accuses three distinct Lumicore product families — the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR modules — of infringing the asserted patents. Each product family involves different technical architectures and configurations, requiring separate infringement analysis.
(d) Multiple damages theories. OWS asserts multiple damages theories, including lost profits, a reasonable royalty based on a hypothetical negotiation, and enhanced damages for willful infringement under 35 U.S.C. § 284. The damages analysis will require extensive financial discovery, market analysis, and expert testimony.
(e) Counterclaims for invalidity and unenforceability. Lumicore has asserted counterclaims for declaratory judgments of invalidity under 35 U.S.C. §§ 102 and 103 and unenforceability based on alleged inequitable conduct. These counterclaims raise additional factual and legal issues that must be developed through discovery and expert analysis.
(f) Anticipated volume of discovery. The parties expect substantial document productions involving technical design files, engineering specifications, hardware description language files, test data, simulation results, financial records, licensing correspondence, source code, and prosecution histories. The parties also anticipate a significant number of fact depositions and expert depositions.
The schedule accounts for each of these factors and provides a reasonable and workable timeline for the completion of each phase of the litigation. The proposed trial date of February 2, 2026, approximately twenty-two (22) months from the filing of the Complaint, is consistent with the Court's customary scheduling practices in patent cases of comparable complexity and is designed to ensure that the parties have sufficient time to develop their respective positions while also providing for the prompt resolution of this dispute.
VI. PRAYER FOR RELIEF
WHEREFORE, the parties jointly and respectfully request that this Court enter the proposed Docket Control Order attached hereto as Exhibit A, incorporating the deadlines and provisions set forth above, and grant such other and further relief as the Court deems just and proper.
VII. CERTIFICATE OF CONFERENCE
The undersigned counsel for Plaintiff Optiwave Semiconductor Corp. and Defendant Lumicore Technologies, Inc. hereby certify that they have met and conferred in good faith regarding the proposed schedule set forth in this Joint Motion and the attached proposed Docket Control Order, and that the foregoing Docket Control Order reflects the agreement of all parties. No party opposes the entry of the proposed Docket Control Order.
Respectfully submitted,
August 9, 2024
FOR PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.:
CALDERWOOD & HARKNESS LLP
By: ________
Alan Ngo Responsible Partner Texas State Bar No. (Pro Hac Vice) 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4800 Facsimile: (213) 555-4801
Email: alan.ngo@calderwoodharkness.com
Admitted pro hac vice, E.D. Tex.
Marcus Delgado Billing Partner Texas State Bar No. 08721345 California State Bar No. 298714 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4810
Email: marcus.delgado@calderwoodharkness.com
Admitted in Texas and California
Wendy Schultz Lead Associate Texas State Bar No. (Pro Hac Vice) 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4820
Email: wendy.schultz@calderwoodharkness.com
Admitted pro hac vice, E.D. Tex.
Omar Siddiqui Working Associate Texas State Bar No. (Pro Hac Vice) 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4830
Email: omar.siddiqui@calderwoodharkness.com
Admitted pro hac vice, E.D. Tex.
WHITMORE & CALLAHAN LLP (Local Counsel)
James "Jim" Callahan Local Counsel Partner Texas State Bar No. 03481290 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 555-2100 Facsimile: (903) 555-2101
Email: jcallahan@whitmorecallahan.com
Admitted in Texas; E.D. Tex.
FOR DEFENDANT LUMICORE TECHNOLOGIES, INC.:
HAWTHORNE VEGA & CRUZ LLP
By: ________
Catherine "Kate" Rourke Lead Partner Texas State Bar No. 24059871 New York State Bar No. 4892173 600 Congress Avenue, Suite 2400 Austin, Texas 78701 Telephone: (512) 555-7200 Facsimile: (512) 555-7201
Email: kate.rourke@hawthornevega.com
Admitted in Texas and New York
Darren Cho Second Chair Partner Texas State Bar No. 24087631 California State Bar No. 312490 600 Congress Avenue, Suite 2400 Austin, Texas 78701 Telephone: (512) 555-7210
Email: darren.cho@hawthornevega.com
Admitted in Texas and California
Samantha Briggs Lead Associate Texas State Bar No. 24102984 600 Congress Avenue, Suite 2400 Austin, Texas 78701 Telephone: (512) 555-7220
Email: samantha.briggs@hawthornevega.com
Admitted in Texas
Rohan Iyer Working Associate Texas State Bar No. 24115672 600 Congress Avenue, Suite 2400 Austin, Texas 78701 Telephone: (512) 555-7230
Email: rohan.iyer@hawthornevega.com
Admitted in Texas
TRASK EDDINGTON LLP (Local Counsel)
Maria Garza Local Counsel Partner Texas State Bar No. 07892431 425 East Front Street, Suite 300 Tyler, Texas 75701 Telephone: (903) 555-3400 Facsimile: (903) 555-3401
Email: mgarza@traskeddington.com
Admitted in Texas; E.D. Tex.
CERTIFICATE OF SERVICE
I hereby certify that on August 9, 2024, a true and correct copy of the foregoing Joint Motion for Entry of Docket Control Order, together with all exhibits attached thereto, was served on all counsel of record via the Court's CM/ECF electronic filing system, which will send notification of such filing to all counsel of record who have consented to electronic service.
________________________________________
Alan Ngo CALDERWOOD & HARKNESS LLP Counsel for Plaintiff Optiwave Semiconductor Corp.
EXHIBIT A
[PROPOSED] DOCKET CONTROL ORDER
UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
[PROPOSED] DOCKET CONTROL ORDER
Having considered the parties' Joint Motion for Entry of Docket Control Order (Dkt. No. _), and finding good cause therefor, the Court ORDERS as follows:
1. On or before September 16, 2024, Plaintiff shall serve its P.R. 3-1 Infringement Contentions, identifying each asserted claim of each asserted patent, each accused instrumentality, and the specific basis for Plaintiff's allegation of infringement on a claim-by-claim, limitation-by-limitation basis, including any contentions under the doctrine of equivalents, together with all supporting documents and evidence required under the Patent Rules.
2. On or before October 14, 2024, Defendant shall serve its P.R. 3-3 Invalidity Contentions, identifying each item of prior art upon which Defendant relies for its contentions of invalidity and providing claim charts identifying where in the prior art each limitation of each asserted claim is found, together with all supporting documents and evidence required under the Patent Rules.
3. On or before October 28, 2024, the parties shall jointly prepare and file a Joint Claim Construction Statement identifying all disputed claim terms, each party's proposed construction for each disputed term, any terms upon which the parties agree, and the intrinsic and extrinsic evidence upon which each party relies.
4. On or before November 15, 2024, Plaintiff shall file its Opening Claim Construction Brief, together with any supporting declarations and appendices.
5. On or before December 6, 2024, Defendant shall file its Responsive Claim Construction Brief, together with any supporting declarations and appendices.
6. On or before December 20, 2024, Plaintiff shall file its Reply Claim Construction Brief, together with any supporting declarations and appendices.
7. On or before January 10, 2025, Defendant may file a Sur-Reply Claim Construction Brief, if permitted by leave of Court. Any request for leave to file a sur-reply shall be made by separate motion.
8. On or before January 15, 2025, the parties shall file a final Joint Claim Construction Chart reflecting each party's final proposed constructions for all disputed terms.
9. In February 2025, the parties shall submit Claim Construction Tutorial materials, including tutorial presentations, demonstrative exhibits, and tutorial declarations. The exact date for submission shall be set by the Court by separate order.
10. A Markman Hearing on claim construction shall be held on March 14, 2025, at a time to be designated by the Court.
11. The close of fact discovery shall be May 1, 2025. All fact depositions, responses to written discovery, and document productions shall be completed by this date. Initial Disclosures under Federal Rule of Civil Procedure 26(a)(1) shall be served on or before August 19, 2024. Written discovery may be served beginning August 26, 2024.
12. On or before June 15, 2025, Plaintiff shall serve its opening expert reports on all issues for which Plaintiff bears the burden of proof, including infringement, validity rebuttal, damages, willfulness, and industry background.
13. On or before July 15, 2025, Defendant shall serve its rebuttal expert reports and its opening expert reports on all issues for which Defendant bears the burden of proof, including invalidity, unenforceability, non-infringement rebuttal, and damages rebuttal.
14. The close of expert discovery shall be August 15, 2025. All expert depositions shall be completed by this date.
15. On or before September 15, 2025, the parties shall file any dispositive motions, including motions for summary judgment or partial summary judgment. Responses shall be due on or before October 15, 2025. Replies shall be due on or before November 1, 2025.
16. On or before November 1, 2025, the parties shall file any Daubert motions to exclude expert testimony. Responses shall be due on or before December 1, 2025. Replies shall be due on or before December 15, 2025.
17. In December 2025, the parties shall file Proposed Jury Instructions, Proposed Verdict Forms, Witness Lists, and Exhibit Lists. The exact date shall be set by the Court by separate order.
18. In January 2026, the parties shall file Motions in Limine and Deposition Designation and Counter-Designation Charts. The exact dates shall be set by the Court by separate order.
19. A Pre-Trial Conference shall be held on January 5, 2026, at a time to be designated by the Court.
20. A Jury Trial shall commence on February 2, 2026. The estimated duration of trial is seven (7) to ten (10) days.
ADDITIONAL PROVISIONS:
21. Modification of Schedule. The schedule set forth in this Docket Control Order shall not be modified except upon joint motion of the parties demonstrating good cause for the requested modification, or by order of the Court. The parties are reminded that the Court expects strict adherence to the deadlines set forth in this Order and that extensions will be granted only in exceptional circumstances.
22. Protective Order. The parties shall submit a jointly proposed Stipulated Protective Order for entry by the Court on or before August 19, 2024.
23. discovery Disputes. All discovery disputes shall be presented first through a good-faith meet-and-confer between counsel. If the parties are unable to resolve a discovery dispute through meet-and-confer, the aggrieved party shall submit a joint letter to the Court, not to exceed five (5) pages per side, setting forth the nature of the dispute, each party's position, and the relief sought, consistent with the Court's Standing Orders Regarding discovery Disputes. No formal discovery motion shall be filed without prior leave of Court or unless the Court directs otherwise after review of the joint letter submission.
24. Joint Status Reports. The parties shall confer and provide joint status reports as directed by the Court. The first joint status report shall be due on a date to be set by the Court. Joint status reports shall address, at a minimum, the status of discovery, any outstanding disputes, the status of any settlement discussions (without disclosing the substance of such discussions), and any other matters that the parties wish to bring to the Court's attention.
25. Supplementation of Contentions. Infringement contentions and invalidity contentions may be supplemented upon a showing of good cause, consistent with the Patent Rules of Practice for the Eastern District of Texas.
26. Compliance with Local Rules and Standing Orders. All proceedings in this case shall comply with the Local Rules of the Eastern District of Texas, the Patent Rules of Practice, and the Court's Standing Orders, except as modified by this Docket Control Order.
SO ORDERED this _ day of ____, 2024.
________________________________________
HONORABLE JAMES R. GILSTRAP UNITED STATES DISTRICT JUDGE
OPTIWAVE SEMICONDUCTOR CORP., | §
§
Plaintiff, | §
§ | Case No. 2:24-cv-00319-JRG
v. | §
§ | Judge James R. Gilstrap
LUMICORE TECHNOLOGIES, INC., | §
§
Defendant. | §
Deadline | Event
September 16, 2024 | Plaintiff's P.R. 3-1 Infringement Contentions due. Plaintiff shall identify each asserted claim of each asserted patent, each accused instrumentality (including each accused product, process, method, system, or apparatus), and the specific basis for Plaintiff's allegation of infringement on a claim-by-claim, limitation-by-limitation basis, with reference to the structure, operation, and functionality of each accused instrumentality. Plaintiff's Infringement Contentions shall also separately identify any contentions of infringement under the doctrine of equivalents, specifying the function, way, and result for each limitation as to which equivalents are asserted. Plaintiff shall also produce or make available for inspection documents sufficient to show the operation of each accused instrumentality in the manner that Plaintiff contends constitutes infringement.
October 14, 2024 | Defendant's P.R. 3-3 Invalidity Contentions due. Defendant shall identify each item of prior art upon which Defendant relies for its contentions of invalidity, including prior art patents, prior art printed publications, prior public use or sale, and any other prior art under 35 U.S.C. §§ 102 and 103. For each item of prior art, Defendant shall provide a chart identifying where in the prior art each limitation of each asserted claim is found, on a claim-by-claim, limitation-by-limitation basis. Defendant shall also identify any grounds for invalidity under 35 U.S.C. § 112. Defendant shall produce or make available for inspection all prior art references upon which Defendant relies.
October 28, 2024 | Joint Claim Construction Statement due. The parties shall jointly prepare and file a Joint Claim Construction Statement that identifies: (i) each claim term, phrase, or clause that any party contends should be construed by the Court; (ii) each party's proposed construction for each disputed term; (iii) any terms upon which the parties have agreed as to construction; and (iv) the intrinsic and extrinsic evidence upon which each party relies in support of its proposed construction. The Joint Claim Construction Statement shall also include a brief identification of the relevance of each disputed term to the issues of infringement, validity, or enforceability.
Deadline | Event
November 15, 2024 | Plaintiff's (OWS's) Opening Claim Construction Brief due. Plaintiff's brief shall address each disputed claim term identified in the Joint Claim Construction Statement and shall present Plaintiff's proposed construction with supporting analysis of the intrinsic record (including the claim language, specification, and prosecution history) and any relevant extrinsic evidence.
December 6, 2024 | Defendant's (Lumicore's) Responsive Claim Construction Brief due. Defendant's brief shall respond to Plaintiff's proposed constructions and present Defendant's own proposed constructions with supporting analysis.
December 20, 2024 | Plaintiff's Reply Claim Construction Brief due. Plaintiff may address arguments raised in Defendant's Responsive Brief and may submit additional evidence in response to arguments or evidence raised for the first time in Defendant's Responsive Brief.
January 10, 2025 | Defendant's Sur-Reply Claim Construction Brief due, if permitted by leave of the Court. The parties agree that Defendant may seek leave to file a sur-reply, and that the appropriateness of any such filing shall be determined by the Court.
January 15, 2025 | Joint Claim Construction Chart (final version) due. The parties shall submit a final, updated version of the Joint Claim Construction Chart reflecting any revisions or clarifications to the parties' proposed constructions that have occurred during the briefing process.
February 2025 | Claim Construction Tutorial Submissions due. The exact date shall be set by the Court. Each party may submit technology tutorial materials, including demonstrative presentations, technical diagrams, and tutorial declarations, to assist the Court in understanding the technical subject matter of the asserted patents and the disputed claim terms.
March 14, 2025 | Markman Hearing. The Court will conduct a hearing on claim construction. The parties anticipate that the hearing will require approximately one full day, given the number of disputed terms and the complexity of the underlying technology.
Deadline | Event
August 19, 2024 | Initial Disclosures under Federal Rule of Civil Procedure 26(a)(1) due. Each party shall serve its Initial Disclosures identifying: (i) persons likely to have discoverable information that the disclosing party may use to support its claims or defenses; (ii) a copy or description of documents, electronically stored information, and tangible things in the disclosing party's possession, custody, or control; (iii) a computation of damages; and (iv) insurance agreements.
August 26, 2024 | First set of written discovery may be served. Written discovery includes interrogatories under Federal Rule of Civil Procedure 33, requests for production of documents and electronically stored information under Federal Rule of Civil Procedure 34, and requests for admission under Federal Rule of Civil Procedure 36.
May 1, 2025 | Close of Fact discovery. All fact discovery, including depositions of fact witnesses, responses to written discovery, and document productions, shall be completed by this date. Any disputes regarding fact discovery must be raised with the Court in sufficient time to allow resolution prior to this deadline.
Deadline | Event
June 15, 2025 | Plaintiff's Expert Reports due. Plaintiff shall serve opening expert reports on all issues for which Plaintiff bears the burden of proof, including infringement (direct, induced, and contributory), rebuttal of invalidity defenses, damages (both lost profits and reasonable royalty), willfulness, and industry background.
July 15, 2025 | Defendant's Rebuttal Expert Reports due. Defendant shall serve rebuttal expert reports, as well as opening expert reports on all issues for which Defendant bears the burden of proof, including invalidity, unenforceability, non-infringement rebuttal, and damages rebuttal.
August 15, 2025 | Close of Expert discovery. All expert depositions shall be completed by this date. Each party shall make its expert witnesses available for deposition at a mutually convenient time and location during the expert discovery period.
Deadline | Event
September 15, 2025 | Dispositive Motions due. Any party may file motions for summary judgment or partial summary judgment under Federal Rule of Civil Procedure 56 on any issue, including infringement, non-infringement, invalidity, unenforceability, damages, willfulness, or any other issue appropriate for summary adjudication.
October 15, 2025 | Responses to Dispositive Motions due. The non-moving party shall file its response brief, together with any supporting evidence, declarations, and appendices.
November 1, 2025 | Replies in Support of Dispositive Motions due. The moving party may file a reply brief addressing arguments raised in the non-moving party's response.
Deadline | Event
November 1, 2025 | Daubert Motions due. Any party may file motions to exclude all or a portion of the testimony of any opposing expert witness on the grounds that such testimony does not satisfy the requirements of Federal Rule of Evidence 702 and the Daubert reliability framework.
December 1, 2025 | Responses to Daubert Motions due.
December 15, 2025 | Replies in Support of Daubert Motions due.
Deadline | Event
December 2025 | Proposed Jury Instructions, Proposed Verdict Form, Witness Lists, and Exhibit Lists due. The exact date shall be set by the Court. Each party shall submit proposed jury instructions and a proposed verdict form, as well as a final list of witnesses it intends to call at trial and a list of exhibits it intends to offer into evidence.
January 2026 | Motions in Limine due. Deposition Designation and Counter-Designation Charts due. The exact dates shall be set by the Court. Each party shall file any motions in limine seeking to exclude or limit evidence at trial. The parties shall also exchange and file deposition designation and counter-designation charts identifying portions of deposition testimony to be presented at trial.
January 5, 2026 | Pre-Trial Conference. The Court will conduct a final pre-trial conference to address any outstanding pre-trial issues, including the resolution of motions in limine, the finalization of jury instructions and the verdict form, and any other matters necessary for the efficient conduct of trial.
February 2, 2026 | Jury Trial. Trial shall commence on this date before a jury. The estimated duration of trial is seven (7) to ten (10) days.
OPTIWAVE SEMICONDUCTOR CORP., | §
§
Plaintiff, | §
§ | Case No. 2:24-cv-00319-JRG
v. | §
§ | Judge James R. Gilstrap
LUMICORE TECHNOLOGIES, INC., | §
§
Defendant. | §

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

JOINT MOTION FOR ENTRY OF DOCKET CONTROL ORDER

I. INTRODUCTION

II. NATURE OF THE CASE

III. PROPOSED DOCKET CONTROL ORDER SCHEDULE

IV. ADDITIONAL CASE MANAGEMENT PROVISIONS

V. STATEMENT OF GOOD CAUSE

VI. PRAYER FOR RELIEF

VII. CERTIFICATE OF CONFERENCE

FOR PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.:

CALDERWOOD & HARKNESS LLP

FOR DEFENDANT LUMICORE TECHNOLOGIES, INC.:

HAWTHORNE VEGA & CRUZ LLP

CERTIFICATE OF SERVICE

EXHIBIT A

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

ADDITIONAL PROVISIONS:

HONORABLE JAMES R. GILSTRAP UNITED STATES DISTRICT JUDGE

Record

Parties

Dates

Amounts