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

PLAINTIFF/COUNTERCLAIM-DEFENDANT OPTIWAVE SEMICONDUCTOR CORP.'S ANSWER TO DEFENDANT/COUNTERCLAIM-PLAINTIFF LUMICORE TECHNOLOGIES, INC.'S COUNTERCLAIMS

Plaintiff/Counterclaim-Defendant Optiwave Semiconductor Corp. ("OWS" or "Plaintiff/Counterclaim-Defendant"), by and through its undersigned counsel, Calderwood & Harkness LLP and Whitmore & Callahan LLP, hereby respectfully files this Answer to the Counterclaims asserted by Defendant/Counterclaim-Plaintiff Lumicore Technologies, Inc. ("Lumicore" or "Defendant/Counterclaim-Plaintiff") in its Answer, Affirmative Defenses, and Counterclaims filed on June 17, 2024 (D.E. 12) (the "Counterclaims"). OWS responds to each allegation of the Counterclaims as set forth below.

OWS denies each and every allegation of the Counterclaims except those expressly admitted herein. To the extent any allegation contained in the Counterclaims is not specifically addressed in this Answer, such allegation is denied. OWS reserves all rights to amend this Answer to Counterclaims and to assert additional defenses as discovery in this matter progresses and additional facts become known.

I. RESPONSES TO COUNTERCLAIM ALLEGATIONS

A. Response to Jurisdictional and Venue Allegations

1. OWS admits that this action is pending before the United States District Court for the Eastern District of Texas, marshall Division, under Case No. 2:24-cv-00319-JRG.

2. OWS admits that the Court has subject-matter jurisdiction over the patent-related counterclaims asserted by Lumicore pursuant to 28 U.S.C. §§ 1331 and 1338(a), which confer original jurisdiction over civil actions arising under the patent laws of the United States.

3. OWS admits that Lumicore Technologies, Inc. is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business and headquarters located at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759.

4. OWS admits that it is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business located at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054.

5. OWS admits that it filed its original Complaint in this action (D.E. 1) on April 22, 2024, asserting infringement of U.S. Patent Nos. 10,234,847 (the "'847 Patent"), 10,891,193 (the "'193 Patent"), 9,678,562 (the "'562 Patent"), and 11,402,015 (the "'015 Patent") (collectively, the "Asserted Patents").

6. With respect to Lumicore's allegations regarding venue, OWS notes that this Court's Order dated August 5, 2024 (D.E. 25), denying Lumicore's Motion to Transfer Venue Under 28 U.S.C. § 1404(a) (D.E. 13), confirms the propriety of venue in this District. As found in the Court's Order, Lumicore maintains a sales office and technical support center located at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701, and has made, used, offered to sell, and sold accused products to customers within the Eastern District of Texas, including, without limitation, Pinnacle Data Systems, LLC (Longview, Texas), Frontier Cloud Services, Inc. (Marshall, Texas), and CrossPoint Networking Corp. (Plano, Texas — transferred to the Tyler Division for case management purposes). To the extent Lumicore's venue allegations contain characterizations inconsistent with the foregoing or with the Court's August 5, 2024 Order, such allegations are denied.

B. Response to Allegations Regarding the Asserted Patents

7. OWS admits that U.S. Patent No. 10,234,847 (the "'847 Patent"), titled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss," was filed on September 14, 2016, and issued on March 19, 2019, and that Optiwave Semiconductor Corp. is listed as both the original assignee and the current assignee of the '847 Patent.

8. OWS admits that U.S. Patent No. 10,891,193 (the "'193 Patent"), titled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate," was filed on April 7, 2017, and issued on January 12, 2021, and that Optiwave Semiconductor Corp. is listed as both the original assignee and the current assignee of the '193 Patent. OWS further admits that the '193 Patent claims priority to U.S. Provisional Application No. 62/499,117, filed April 7, 2017.

9. OWS admits that U.S. Patent No. 9,678,562 (the "'562 Patent"), titled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks," was filed on November 22, 2014, and issued on June 13, 2017. OWS admits that the original assignee of the '562 Patent was Solara Optics, Inc., and that OWS acquired the '562 Patent, along with eleven (11) other patents and patent applications, from Solara Optics, Inc. pursuant to an Asset Purchase Agreement dated June 15, 2018, for a total consideration of $34.5 million. OWS is the current assignee and sole owner of the '562 Patent, and the assignment was duly recorded at the United States Patent and Trademark Office.

10. OWS admits that U.S. Patent No. 11,402,015 (the "'015 Patent"), titled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," was filed on August 30, 2019, and issued on August 2, 2022, and that Optiwave Semiconductor Corp. is listed as both the original assignee and the current assignee of the '015 Patent. OWS further admits that the '015 Patent claims priority to U.S. Provisional Application No. 62/499,117, which is the same provisional application from which the '193 Patent claims priority.

11. OWS admits that the '562 Patent and the '847 Patent are in the same patent family and share a continuation relationship.

12. OWS affirmatively avers that all four Asserted Patents are valid utility patents duly issued by the United States Patent and Trademark Office. All required maintenance fees for the Asserted Patents are current. OWS is the sole owner of all four Asserted Patents and possesses the full right and standing to enforce each of them in this action.

13. To the extent the Counterclaims contain any additional allegations regarding the Asserted Patents, their prosecution histories, their scope, their validity, or their enforceability that are inconsistent with the patents themselves, their prosecution histories as maintained by the USPTO, and the public record, such allegations are denied.

C. Response to Allegations Regarding Lumicore's Products

14. OWS admits that Lumicore manufactures and sells products under the product names LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR (collectively, the "Accused Products").

15. OWS admits, upon information and belief, that the LumiLink 400G-ZR+ was commercially launched in the third quarter of 2022, that the LumiLink 800G-DR8 was commercially launched in the first quarter of 2023, and that the LumiEdge 1600G-LR was commercially launched in the fourth quarter of 2023.

16. OWS denies Lumicore's allegation that the Accused Products do not infringe any valid claim of the '847, '193, '562, or '015 Patents, whether literally or under the doctrine of equivalents. OWS's Complaint (D.E. 1) sets forth detailed allegations of infringement, and OWS's Infringement Contentions served pursuant to Patent Rule 3-1 on September 16, 2024 (D.E. 32) provide the claim-by-claim, limitation-by-limitation basis for infringement as to each Accused Product and each asserted claim.

17. OWS denies any characterization of Lumicore's Accused Products that is inconsistent with the evidence developed in this case, including but not limited to the teardown analyses performed by Benchmark Semiconductor Analysis, LLC. Specifically, the teardown report on the LumiLink 400G-ZR+ was delivered on December 12, 2022; the follow-on teardown report on the LumiLink 800G-DR8 was delivered in June 2023; and the teardown report on the LumiEdge 1600G-LR was delivered in February 2024. Each of these reports confirms the presence of structures and methods in the Accused Products that correspond to the limitations of the asserted claims of the Asserted Patents.

18. OWS further avers that its Infringement Contentions (P.R. 3-1, D.E. 32) detail the basis for both literal infringement and infringement under the doctrine of equivalents for Claims 3 and 7 of the '193 Patent and Claim 12 of the '015 Patent.

D. Response to Allegations Regarding Pre-Suit Licensing Contacts

19. OWS admits that FairPoint Licensing Group, LLC, acting as OWS's authorized licensing agent, sent an initial licensing letter to Lumicore's General Counsel, Raymond Bautista, on January 15, 2023. The January 15, 2023 letter identified the '847, '193, and '562 Patents and set forth OWS's position that certain Lumicore products, including the LumiLink 400G-ZR+, infringed those patents.

20. OWS admits that Lumicore responded to the January 15, 2023 licensing letter on February 28, 2023, through outside patent litigation counsel at Hawthorne Vega & Cruz LLP. In that response, Lumicore disputed infringement and raised questions about the validity of the identified patents.

21. OWS admits that an in-person licensing meeting took place in Austin, Texas, on April 20, 2023. The meeting was attended by Angela Reeves (FairPoint Licensing Group, LLC), Rebecca Tanaka (OWS, Vice President of intellectual Property), Raymond Bautista (Lumicore, General Counsel), and Catherine "Kate" Rourke (Hawthorne Vega & Cruz LLP, lead outside counsel for Lumicore). During this meeting, the parties discussed the scope of the Asserted Patents, the accused products, and the terms of a potential licensing arrangement.

22. OWS admits that FairPoint Licensing Group, LLC sent a second licensing letter to Lumicore on May 15, 2023. The May 15, 2023 letter added the '015 Patent (which had issued on August 2, 2022) to the set of patents at issue and expanded the scope of accused products to include the LumiLink 800G-DR8, which Lumicore had commercially launched in the first quarter of 2023.

23. OWS admits that Lumicore, through its General Counsel Raymond Bautista, declined to take a license under the Asserted Patents on July 10, 2023. In its July 10, 2023 letter, Lumicore stated that it had obtained "competent legal opinions" concluding that its products do not infringe the Asserted Patents.

24. OWS denies that the pre-suit licensing contacts described in the Counterclaims in any way undermine, weaken, or negate OWS's claims of infringement or willful infringement. To the contrary, the extensive pre-suit notice provided to Lumicore — spanning from January 15, 2023 through July 10, 2023, and including detailed claim charts and an in-person technical presentation — strengthens OWS's position that Lumicore acted with knowledge of the Asserted Patents and continued to infringe willfully.

25. OWS denies any characterization of the licensing negotiations that suggests OWS's licensing positions were unreasonable, made in bad faith, or otherwise improper. OWS and its licensing agent, FairPoint Licensing Group, LLC, engaged in good-faith licensing efforts, consistent with industry practice, and offered Lumicore commercially reasonable terms for a license.

II. RESPONSES TO SPECIFIC COUNTERCLAIMS

Response to Counterclaim I: Declaratory Judgment of Non-Infringement of the '847 Patent

26. OWS denies each and every allegation set forth in Counterclaim I of Lumicore's Counterclaims.

27. OWS affirmatively avers that its Complaint (D.E. 1, Count I) properly alleges that the LumiLink 400G-ZR+ and the LumiLink 800G-DR8 infringe asserted Claims 1, 3, 5, 9, and 14 of the '847 Patent, titled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss." OWS's Infringement Contentions (P.R. 3-1, D.E. 32) detail, on a claim-by-claim and limitation-by-limitation basis, how each Accused Product meets each element of the asserted claims.

28. OWS further avers that the teardown analyses performed by Benchmark Semiconductor Analysis, LLC confirm the presence of multi-channel silicon photonic waveguide multiplexer structures with low insertion loss in the Accused Products. The die-level photomicrographs and spectral measurements contained in the Benchmark reports demonstrate that the Accused Products include waveguide multiplexer architectures that correspond to the structures described and claimed in the '847 Patent.

29. OWS denies that Lumicore is entitled to a declaratory judgment of non-infringement of the '847 Patent and respectfully requests that Counterclaim I be dismissed in its entirety with prejudice.

Response to Counterclaim II: Declaratory Judgment of Non-Infringement of the '193 Patent

30. OWS denies each and every allegation set forth in Counterclaim II of Lumicore's Counterclaims.

31. OWS affirmatively avers that its Complaint (D.E. 1, Count II) properly alleges that all three Accused Products — the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR — infringe asserted Claims 1, 3, 7, 10, 15, and 18 of the '193 Patent, titled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate." OWS's Infringement Contentions (P.R. 3-1, D.E. 32) provide the detailed basis for these infringement allegations.

32. OWS further avers that it asserts both literal infringement and infringement under the doctrine of equivalents as to Claims 3 and 7 of the '193 Patent. Specifically, OWS contends that even if Lumicore's accused designs do not literally satisfy the "coherent detection module" limitation recited in Claims 3 and 7, the corresponding elements in the Accused Products perform substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed "coherent detection module." The doctrine of equivalents prevents Lumicore from escaping infringement liability through insubstantial design-arounds of the patented technology.

33. OWS denies that Lumicore is entitled to a declaratory judgment of non-infringement of the '193 Patent and respectfully requests that Counterclaim II be dismissed in its entirety with prejudice.

Response to Counterclaim III: Declaratory Judgment of Non-Infringement of the '562 Patent

34. OWS denies each and every allegation set forth in Counterclaim III of Lumicore's Counterclaims.

35. OWS affirmatively avers that its Complaint (D.E. 1, Count III) properly alleges that the LumiLink 400G-ZR+ and the LumiLink 800G-DR8 infringe asserted Claims 1, 4, 6, and 11 of the '562 Patent, titled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks." OWS's Infringement Contentions (P.R. 3-1, D.E. 32) detail, on a claim-by-claim and limitation-by-limitation basis, how each Accused Product meets each element of the asserted claims.

36. OWS further avers that it acquired the '562 Patent from Solara Optics, Inc. pursuant to the Asset Purchase Agreement dated June 15, 2018, and that OWS holds clear and undisputed title to the '562 Patent. The assignment was properly executed, recorded at the USPTO, and is a matter of public record. There is no defect in OWS's chain of title to the '562 Patent, and OWS has full right and standing to assert the '562 Patent in this action.

37. OWS denies that Lumicore is entitled to a declaratory judgment of non-infringement of the '562 Patent and respectfully requests that Counterclaim III be dismissed in its entirety with prejudice.

Response to Counterclaim IV: Declaratory Judgment of Non-Infringement of the '015 Patent

38. OWS denies each and every allegation set forth in Counterclaim IV of Lumicore's Counterclaims.

39. OWS affirmatively avers that its Complaint (D.E. 1, Count IV) properly alleges that the LumiLink 800G-DR8 and the LumiEdge 1600G-LR infringe asserted Claims 1, 5, 8, 12, and 16 of the '015 Patent, titled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers." OWS's Infringement Contentions (P.R. 3-1, D.E. 32) detail the specific bases for these infringement allegations.

40. OWS further avers that it asserts both literal infringement and infringement under the doctrine of equivalents as to Claim 12 of the '015 Patent. Specifically, OWS contends that even if Lumicore's accused designs do not literally satisfy the "two-dimensional sub-wavelength grating" limitation recited in Claim 12, the corresponding elements in the Accused Products perform substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed "two-dimensional sub-wavelength grating." The differences between the accused element and the claimed limitation, if any, are insubstantial and do not permit Lumicore to avoid infringement.

41. OWS denies that Lumicore is entitled to a declaratory judgment of non-infringement of the '015 Patent and respectfully requests that Counterclaim IV be dismissed in its entirety with prejudice.

Response to Counterclaim V: Invalidity of the Asserted Patents Under 35 U.S.C. §§ 102 and 103

42. OWS denies each and every allegation set forth in Counterclaim V of Lumicore's Counterclaims.

43. OWS denies that any claim of the '847, '193, '562, or '015 Patents is invalid under 35 U.S.C. § 102 (anticipation) or 35 U.S.C. § 103 (obviousness), whether based on the prior-art references cited by Lumicore or on any other basis.

44. OWS affirmatively avers that all four Asserted Patents enjoy a statutory presumption of validity under 35 U.S.C. § 282. This presumption places the burden squarely on Lumicore to prove invalidity of each asserted claim by clear and convincing evidence. See Kestrel Partners LLC v. i4i Ltd. P'ship, 564 U.S. 91, 95 (2011). Lumicore cannot carry this heavy burden.

45. OWS notes that Lumicore's Invalidity Contentions served pursuant to Patent Rule 3-3 on October 14, 2024 (D.E. 36) cite twenty-three (23) prior-art references in support of its invalidity theories. OWS contends that none of these references, individually or in any combination, anticipates or renders obvious any asserted claim of the Asserted Patents. Without limiting the generality of the foregoing, OWS specifically responds as follows:

(a) As to the '847 Patent: Lumicore relies upon Takahashi et al., "Dense WDM Silicon Photonic MUX," published in IEEE Photonics Technology Letters in March 2014. This reference does not anticipate any asserted claim of the '847 Patent because it fails to disclose key limitations of the claimed multi-channel waveguide multiplexer structure, including, without limitation, the specific arrangement of cascaded Mach-Zehnder interferometers and the low insertion loss characteristics as claimed. The Takahashi reference describes a fundamentally different multiplexer architecture that does not disclose each and every element of any asserted claim.

(b) As to the '562 Patent: Lumicore relies upon U.S. Patent No. 8,412,007 (Bergmann) and the conference paper authored by Dr. Li Wei, titled "Thermal Solutions for PICs," presented at OFC 2013 in March 2013. Neither of these references, individually or in combination, renders the asserted claims of the '562 Patent obvious. These references fail to disclose the specific embedded micro-channel heat-sink configuration as claimed, including the claimed channel dimensions, the integration method with the photonic integrated circuit substrate, and the closed-loop thermal feedback mechanism recited in the asserted claims. A person of ordinary skill in the art at the time of the invention would not have been motivated to combine these references in the manner suggested by Lumicore, and doing so would not have yielded the claimed invention without the benefit of hindsight.

(c) As to the '847 Patent (additional reference): Lumicore also relies upon PCT/EP2015/071234 (Simonsen, published September 17, 2015). This international application does not, alone or in combination with any other cited reference, render the asserted claims of the '847 Patent obvious. The Simonsen application addresses a different type of photonic multiplexer structure and does not teach or suggest the specific low-insertion-loss waveguide configuration claimed in the '847 Patent.

(d) As to the '015 Patent: Lumicore asserts a prior-conception defense based on purported internal design documents allegedly dated 2016–2017. This defense fails as a matter of law and fact. Lumicore's purported internal design documents are unsupported by adequate corroboration as required under the law of prior invention. See Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998) (requiring corroborating evidence beyond the testimony of the alleged inventor). Moreover, even assuming the existence of such documents, Lumicore has not demonstrated reduction to practice, diligence, or any of the other elements required to establish a prior-invention defense.

46. OWS further avers that strong secondary considerations of non-obviousness support the validity of all Asserted Patents. These secondary considerations include, but are not limited to, the following:

(a) Commercial Success: OWS's commercial products embodying the patented inventions — including the OWS-400ZR and OWS-800XR product lines — have achieved significant commercial success. Approximately $310 million of OWS's $487.3 million in fiscal year 2023 revenue is attributable to products that practice the Asserted Patents. This commercial success is directly tied to the patented innovations and is a strong indicator of non-obviousness.

(b) Long-Felt but Unsolved Need: The silicon photonics industry experienced a long-felt but unsolved need for low-insertion-loss waveguide multiplexing in silicon-photonic transceiver modules. Prior to OWS's innovations, industry participants struggled to achieve acceptable insertion-loss performance in multi-channel silicon photonic multiplexer designs while maintaining manufacturability at commercial scale.

(c) Failure of Others: At least three competitors in the silicon photonics industry attempted to develop similar low-insertion-loss waveguide multiplexer designs and thermal management solutions for photonic integrated circuits before OWS's innovations, but without success. These failed efforts underscore the non-obvious nature of OWS's patented inventions.

(d) Copying by Lumicore: The evidence demonstrates that Lumicore copied OWS's patented technology in designing the Accused Products. Specifically, the deposition testimony of Dr. Sandra Michaud, Lumicore's Chief Technology Officer, taken on November 19, 2024, reveals that Lumicore's engineering team reviewed OWS's published patent application No. 2018/0123456 during the design phase of the LumiLink 400G-ZR+. OWS further anticipates that the testimony of former Lumicore engineer Melissa Chen, now employed at Veridian Photonics, Inc., will provide additional evidence of Lumicore's access to and reliance upon OWS's patented technology during the development of the Accused Products.

47. OWS denies that any of the twenty-three (23) prior-art references cited in Lumicore's Invalidity Contentions, individually or in any combination, invalidates any asserted claim of any Asserted Patent.

48. OWS notes that no inter partes review petitions have been filed to date against any of the Asserted Patents at the USPTO's Patent Trial and Appeal Board.

49. OWS denies that Lumicore is entitled to a declaratory judgment of invalidity of any Asserted Patent and respectfully requests that Counterclaim V be dismissed in its entirety with prejudice.

Response to Counterclaim VI: Unenforceability / Inequitable Conduct

50. OWS denies each and every allegation set forth in Counterclaim VI of Lumicore's Counterclaims.

51. OWS denies that Dr. Jian-Wei Huang, OWS's Chief Technology Officer and a named inventor on certain of the Asserted Patents, or any other individual associated with OWS or involved in the prosecution of the Asserted Patents, engaged in inequitable conduct before the United States Patent and Trademark Office during the prosecution of any of the Asserted Patents.

52. OWS affirmatively avers that Lumicore's allegation — that Dr. Huang failed to disclose a prior publication to the USPTO during the prosecution of the '193 Patent — is without merit for the following reasons:

(a) The reference at issue was cumulative of prior art already cited by the patent examiner and considered by the USPTO during prosecution of the '193 Patent. The prosecution history of the '193 Patent demonstrates that the examiner conducted a thorough prior-art search and considered numerous references in the same field, including references that disclosed the same or substantially similar subject matter as the allegedly undisclosed reference. Disclosure of a cumulative reference is not "but-for" material to patentability.

(b) There is no evidence of specific intent to deceive the USPTO, as required under the heightened standard established in Brightmoor & Co., Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc). The Federal Circuit has made clear that inequitable conduct requires proof that the applicant made a deliberate decision to withhold a known material reference with the specific intent to deceive the USPTO. Negligence, oversight, or even gross negligence does not satisfy this intent requirement. Id. at 1290. Lumicore cannot establish this element.

(c) Lumicore's inequitable conduct theory fails to satisfy the dual requirements of but-for materiality and specific intent to deceive. Under Brightmoor & Co., both elements must be proven by clear and convincing evidence, and the intent element must be the single most reasonable inference that can be drawn from the evidence. Id. at 1290–91. Lumicore cannot meet this burden.

53. OWS further avers that all four Asserted Patents were prosecuted by Cascade IP Advisors, LLC, with Dr. Martin Chu serving as lead patent prosecution attorney. The prosecution of the Asserted Patents was conducted in full accordance with all applicable duties of disclosure, candor, and good faith before the United States Patent and Trademark Office, as set forth in 37 C.F.R. § 1.56. Multiple Information Disclosure Statements were filed during the prosecution of each patent, disclosing relevant prior art known to the applicants and their patent counsel.

54. OWS denies that any of the Asserted Patents is unenforceable for inequitable conduct or for any other reason, and respectfully requests that Counterclaim VI be dismissed in its entirety with prejudice.

III. AFFIRMATIVE DEFENSES TO COUNTERCLAIMS

Without admitting any of the allegations in Lumicore's Counterclaims, and without assuming any burden of proof that would otherwise rest with Lumicore, OWS asserts the following affirmative defenses to Lumicore's Counterclaims:

First Affirmative Defense: Failure to State a Claim

Lumicore's Counterclaims, individually and collectively, fail to state claims upon which relief can be granted under Rule 12(b)(6) of the Federal Rules of Civil Procedure. The Counterclaims are conclusory, lack sufficient factual allegations to support the relief requested, and do not satisfy the pleading standards set forth in Thackeray Corporation v. Twombly, 550 U.S. 544 (2007), and Ashcroft v. Iqbal, 556 U.S. 662 (2009).

Second Affirmative Defense: Statutory Presumption of Validity

Each of the Asserted Patents — U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015 — is presumed valid under 35 U.S.C. § 282. This presumption may only be overcome by clear and convincing evidence. See Kestrel Partners LLC v. i4i Ltd. P'ship, 564 U.S. 91, 95 (2011). Lumicore bears the burden of proving invalidity by clear and convincing evidence as to each asserted claim, and it cannot carry this burden based on the prior-art references and theories set forth in its Counterclaims and Invalidity Contentions.

Third Affirmative Defense: Prosecution History Estoppel (as to Lumicore's Inequitable Conduct Counterclaim)

To the extent Lumicore's inequitable conduct counterclaim (Counterclaim VI) is based on alleged non-disclosure of prior art during prosecution of the Asserted Patents, OWS asserts that the prosecution histories of all Asserted Patents demonstrate full compliance with the duty of candor and good faith set forth in 37 C.F.R. § 1.56. The prosecution records foreclose Lumicore's theory of inequitable conduct. The prior art at issue was either independently identified and cited by the patent examiner during examination, disclosed by the applicants in Information Disclosure Statements filed during prosecution, or cumulative of references already of record before the USPTO. The prosecution histories, taken as a whole, demonstrate that no material information was withheld from the USPTO with any intent to deceive.

Fourth Affirmative Defense: Waiver

Lumicore has waived certain arguments and defenses by failing to timely raise them or by conduct inconsistent with the positions asserted in its Counterclaims. Specifically, in its July 10, 2023 letter declining to take a license under the Asserted Patents, Lumicore stated that it had obtained "competent legal opinions" concluding that its products do not infringe. However, Lumicore has asserted the attorney-client privilege over those legal opinions and has refused to produce them in discovery. OWS's Motion to Compel production of those legal opinions remains pending before this Court at Docket Entry 40. To the extent Lumicore relies upon or places at issue any advice-of-counsel defense in connection with its Counterclaims, or seeks to rely on the existence of favorable legal opinions to bolster its declaratory judgment counterclaims, OWS contends that Lumicore has waived the attorney-client privilege and work-product protection over those opinions by affirmatively placing their substance at issue in this litigation. See In re EchoStar Commc'ns Corp., 448 F.3d 1294, 1299 (Fed. Cir. 2006).

Fifth Affirmative Defense: Estoppel / Unclean Hands

Lumicore is estopped from asserting invalidity and/or unenforceability of the Asserted Patents, and its Counterclaims are barred or limited by the doctrine of unclean hands, to the extent that Lumicore's own conduct is inconsistent with the equitable relief it seeks. Specifically, Lumicore's conduct includes: (a) its engineering team's review of OWS's published patent application No. 2018/0123456 during the design phase of the LumiLink 400G-ZR+, as admitted by Dr. Sandra Michaud in her November 19, 2024 deposition; (b) its continued manufacture, use, offer for sale, sale, and importation of the Accused Products after receiving detailed pre-suit notice of infringement beginning on January 15, 2023; and (c) its commercial launch of an additional accused product, the LumiEdge 1600G-LR, in the fourth quarter of 2023, after receiving pre-suit notice. This conduct is fundamentally inconsistent with the equitable relief Lumicore seeks through its Counterclaims, and the doctrine of unclean hands precludes Lumicore from obtaining the relief it requests.

Sixth Affirmative Defense: Laches (as to Counterclaims)

To the extent applicable, Lumicore's Counterclaims are barred or limited by the doctrine of laches. Lumicore unreasonably delayed in asserting its invalidity and unenforceability theories despite having knowledge of the Asserted Patents since at least January 15, 2023 — the date of FairPoint Licensing Group, LLC's first licensing letter to Lumicore — and having retained Hawthorne Vega & Cruz LLP as outside patent litigation counsel no later than February 28, 2023. Lumicore's delay in asserting its invalidity and inequitable conduct theories, and any resulting prejudice to OWS, support application of the laches defense to bar or limit the relief available on Lumicore's Counterclaims.

Seventh Affirmative Defense: No Inequitable Conduct — Failure to Meet Brightmoor & Co. Standard

Lumicore cannot satisfy the heightened standard for inequitable conduct established by the Federal Circuit in Brightmoor & Co., Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc). Specifically, Lumicore cannot prove by clear and convincing evidence both: (a) that the allegedly undisclosed reference was but-for material to the issuance of any asserted claim of any Asserted Patent, i.e., that the USPTO would not have allowed the claim had it been aware of the reference; and (b) that the specific intent of the applicant or patent prosecution counsel was to deceive the USPTO by withholding the reference. Id. at 1290–91. As the Federal Circuit has emphasized, inequitable conduct is a serious allegation with severe consequences — including rendering an entire patent unenforceable — and must be supported by clear and convincing evidence of both elements, not mere inference or speculation. OWS avers that neither element can be satisfied here.

Eighth Affirmative Defense: Reservation of Defenses

OWS reserves the right to assert additional affirmative defenses to Lumicore's Counterclaims as discovery in this matter continues and as additional facts and circumstances become known. Discovery is ongoing in this action. Pursuant to the Court's Docket Control Order (D.E. 28), the fact discovery deadline is May 1, 2025, and the expert discovery deadline is August 15, 2025. OWS does not intend its identification of the foregoing affirmative defenses to be exhaustive and expressly reserves all rights to supplement its defenses consistent with the Federal Rules of Civil Procedure and this Court's scheduling orders.

IV. PRAYER FOR RELIEF

WHEREFORE, Plaintiff/Counterclaim-Defendant Optiwave Semiconductor Corp. respectfully requests that the Court enter judgment as follows:

1. Deny and dismiss each of Lumicore's Counterclaims — Counterclaim I (Declaratory Judgment of Non-Infringement of the '847 Patent), Counterclaim II (Declaratory Judgment of Non-Infringement of the '193 Patent), Counterclaim III (Declaratory Judgment of Non-Infringement of the '562 Patent), Counterclaim IV (Declaratory Judgment of Non-Infringement of the '015 Patent), Counterclaim V (Invalidity Under 35 U.S.C. §§ 102 and 103), and Counterclaim VI (Unenforceability / Inequitable Conduct) — in their entirety, with prejudice;

2. Enter judgment declaring that U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015 are valid and enforceable;

3. Enter judgment declaring that Lumicore is not entitled to any declaratory judgment of non-infringement of any Asserted Patent;

4. Award OWS its costs and reasonable attorneys' fees incurred in defending against Lumicore's Counterclaims, to the extent permitted by law, including under 35 U.S.C. § 285 if this case is deemed exceptional; and

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

V. JURY DEMAND

Plaintiff/Counterclaim-Defendant Optiwave Semiconductor Corp. hereby demands a trial by jury on all issues so triable, including but not limited to all issues raised by Lumicore's Counterclaims and all affirmative defenses asserted herein. This demand is made pursuant to Rule 38 of the Federal Rules of Civil Procedure and the Seventh Amendment to the United States Constitution.

Respectfully submitted,

Dated: July 22, 2024

CALDERWOOD & HARKNESS LLP

By: ________

Alan Ngo (CA Bar No. 287451; admitted pro hac vice E.D. Tex.) Responsible Partner, IP Litigation 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 443-7200 Facsimile: (213) 443-7201

Email: alan.ngo@calderwoodharkness.com

Marcus Delgado (TX Bar No. 24098372; CA Bar No. 301784) Billing Partner, IP Litigation 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 443-7200

Email: marcus.delgado@calderwoodharkness.com

Wendy Schultz (CA Bar No. 312659; admitted pro hac vice E.D. Tex.) Lead Associate, IP Litigation 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 443-7200

Email: wendy.schultz@calderwoodharkness.com

Omar Siddiqui (CA Bar No. 319847; admitted pro hac vice E.D. Tex.) Working Associate, IP Litigation 1201 F Street NW, Suite 700 Washington, DC 20004 Telephone: (202) 887-5400

Email: omar.siddiqui@calderwoodharkness.com

WHITMORE & CALLAHAN LLP

James "Jim" Callahan (TX Bar No. 03851290) Local Counsel Partner 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 531-8800 Facsimile: (903) 531-8801

Email: jim.callahan@whitmorecallahan.com

Attorneys for Plaintiff/Counterclaim-Defendant Optiwave Semiconductor Corp.

CERTIFICATE OF SERVICE

I hereby certify that on July 22, 2024, the foregoing Plaintiff/Counterclaim-Defendant Optiwave Semiconductor Corp.'s Answer to Defendant/Counterclaim-Plaintiff Lumicore Technologies, Inc.'s Counterclaims was served on all counsel of record via the Court's CM/ECF electronic filing system, which will send notification of such filing to the following:

Catherine "Kate" Rourke Darren Cho Samantha Briggs Rohan Iyer HAWTHORNE VEGA & CRUZ LLP 600 Congress Avenue, Suite 2400 Austin, Texas 78701

Maria Garza TRASK EDDINGTON LLP 425 East Front Street, Suite 300 Tyler, Texas 75701

Counsel for Defendant/Counterclaim-Plaintiff Lumicore Technologies, Inc.

By: ________

Alan Ngo CALDERWOOD & HARKNESS LLP

OPTIWAVE SEMICONDUCTOR CORP.,

Plaintiff/Counterclaim-Defendant,

Civil Action No. 2:24-cv-00319-JRG

Judge James R. Gilstrap

LUMICORE TECHNOLOGIES, INC.,

Defendant/Counterclaim-Plaintiff.

UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
PLAINTIFF/COUNTERCLAIM-DEFENDANT OPTIWAVE SEMICONDUCTOR CORP.'S ANSWER TO DEFENDANT/COUNTERCLAIM-PLAINTIFF LUMICORE TECHNOLOGIES, INC.'S COUNTERCLAIMS
Plaintiff/Counterclaim-Defendant Optiwave Semiconductor Corp. ("OWS" or "Plaintiff/Counterclaim-Defendant"), by and through its undersigned counsel, Calderwood & Harkness LLP and Whitmore & Callahan LLP, hereby respectfully files this Answer to the Counterclaims asserted by Defendant/Counterclaim-Plaintiff Lumicore Technologies, Inc. ("Lumicore" or "Defendant/Counterclaim-Plaintiff") in its Answer, Affirmative Defenses, and Counterclaims filed on June 17, 2024 (D.E. 12) (the "Counterclaims"). OWS responds to each allegation of the Counterclaims as set forth below.
OWS denies each and every allegation of the Counterclaims except those expressly admitted herein. To the extent any allegation contained in the Counterclaims is not specifically addressed in this Answer, such allegation is denied. OWS reserves all rights to amend this Answer to Counterclaims and to assert additional defenses as discovery in this matter progresses and additional facts become known.
I. RESPONSES TO COUNTERCLAIM ALLEGATIONS
A. Response to Jurisdictional and Venue Allegations
1. OWS admits that this action is pending before the United States District Court for the Eastern District of Texas, marshall Division, under Case No. 2:24-cv-00319-JRG.
2. OWS admits that the Court has subject-matter jurisdiction over the patent-related counterclaims asserted by Lumicore pursuant to 28 U.S.C. §§ 1331 and 1338(a), which confer original jurisdiction over civil actions arising under the patent laws of the United States.
3. OWS admits that Lumicore Technologies, Inc. is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business and headquarters located at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759.
4. OWS admits that it is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business located at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054.
5. OWS admits that it filed its original Complaint in this action (D.E. 1) on April 22, 2024, asserting infringement of U.S. Patent Nos. 10,234,847 (the "'847 Patent"), 10,891,193 (the "'193 Patent"), 9,678,562 (the "'562 Patent"), and 11,402,015 (the "'015 Patent") (collectively, the "Asserted Patents").
6. With respect to Lumicore's allegations regarding venue, OWS notes that this Court's Order dated August 5, 2024 (D.E. 25), denying Lumicore's Motion to Transfer Venue Under 28 U.S.C. § 1404(a) (D.E. 13), confirms the propriety of venue in this District. As found in the Court's Order, Lumicore maintains a sales office and technical support center located at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701, and has made, used, offered to sell, and sold accused products to customers within the Eastern District of Texas, including, without limitation, Pinnacle Data Systems, LLC (Longview, Texas), Frontier Cloud Services, Inc. (Marshall, Texas), and CrossPoint Networking Corp. (Plano, Texas — transferred to the Tyler Division for case management purposes). To the extent Lumicore's venue allegations contain characterizations inconsistent with the foregoing or with the Court's August 5, 2024 Order, such allegations are denied.
B. Response to Allegations Regarding the Asserted Patents
7. OWS admits that U.S. Patent No. 10,234,847 (the "'847 Patent"), titled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss," was filed on September 14, 2016, and issued on March 19, 2019, and that Optiwave Semiconductor Corp. is listed as both the original assignee and the current assignee of the '847 Patent.
8. OWS admits that U.S. Patent No. 10,891,193 (the "'193 Patent"), titled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate," was filed on April 7, 2017, and issued on January 12, 2021, and that Optiwave Semiconductor Corp. is listed as both the original assignee and the current assignee of the '193 Patent. OWS further admits that the '193 Patent claims priority to U.S. Provisional Application No. 62/499,117, filed April 7, 2017.
9. OWS admits that U.S. Patent No. 9,678,562 (the "'562 Patent"), titled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks," was filed on November 22, 2014, and issued on June 13, 2017. OWS admits that the original assignee of the '562 Patent was Solara Optics, Inc., and that OWS acquired the '562 Patent, along with eleven (11) other patents and patent applications, from Solara Optics, Inc. pursuant to an Asset Purchase Agreement dated June 15, 2018, for a total consideration of $34.5 million. OWS is the current assignee and sole owner of the '562 Patent, and the assignment was duly recorded at the United States Patent and Trademark Office.
10. OWS admits that U.S. Patent No. 11,402,015 (the "'015 Patent"), titled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers," was filed on August 30, 2019, and issued on August 2, 2022, and that Optiwave Semiconductor Corp. is listed as both the original assignee and the current assignee of the '015 Patent. OWS further admits that the '015 Patent claims priority to U.S. Provisional Application No. 62/499,117, which is the same provisional application from which the '193 Patent claims priority.
11. OWS admits that the '562 Patent and the '847 Patent are in the same patent family and share a continuation relationship.
12. OWS affirmatively avers that all four Asserted Patents are valid utility patents duly issued by the United States Patent and Trademark Office. All required maintenance fees for the Asserted Patents are current. OWS is the sole owner of all four Asserted Patents and possesses the full right and standing to enforce each of them in this action.
13. To the extent the Counterclaims contain any additional allegations regarding the Asserted Patents, their prosecution histories, their scope, their validity, or their enforceability that are inconsistent with the patents themselves, their prosecution histories as maintained by the USPTO, and the public record, such allegations are denied.
C. Response to Allegations Regarding Lumicore's Products
14. OWS admits that Lumicore manufactures and sells products under the product names LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR (collectively, the "Accused Products").
15. OWS admits, upon information and belief, that the LumiLink 400G-ZR+ was commercially launched in the third quarter of 2022, that the LumiLink 800G-DR8 was commercially launched in the first quarter of 2023, and that the LumiEdge 1600G-LR was commercially launched in the fourth quarter of 2023.
16. OWS denies Lumicore's allegation that the Accused Products do not infringe any valid claim of the '847, '193, '562, or '015 Patents, whether literally or under the doctrine of equivalents. OWS's Complaint (D.E. 1) sets forth detailed allegations of infringement, and OWS's Infringement Contentions served pursuant to Patent Rule 3-1 on September 16, 2024 (D.E. 32) provide the claim-by-claim, limitation-by-limitation basis for infringement as to each Accused Product and each asserted claim.
17. OWS denies any characterization of Lumicore's Accused Products that is inconsistent with the evidence developed in this case, including but not limited to the teardown analyses performed by Benchmark Semiconductor Analysis, LLC. Specifically, the teardown report on the LumiLink 400G-ZR+ was delivered on December 12, 2022; the follow-on teardown report on the LumiLink 800G-DR8 was delivered in June 2023; and the teardown report on the LumiEdge 1600G-LR was delivered in February 2024. Each of these reports confirms the presence of structures and methods in the Accused Products that correspond to the limitations of the asserted claims of the Asserted Patents.
18. OWS further avers that its Infringement Contentions (P.R. 3-1, D.E. 32) detail the basis for both literal infringement and infringement under the doctrine of equivalents for Claims 3 and 7 of the '193 Patent and Claim 12 of the '015 Patent.
D. Response to Allegations Regarding Pre-Suit Licensing Contacts
19. OWS admits that FairPoint Licensing Group, LLC, acting as OWS's authorized licensing agent, sent an initial licensing letter to Lumicore's General Counsel, Raymond Bautista, on January 15, 2023. The January 15, 2023 letter identified the '847, '193, and '562 Patents and set forth OWS's position that certain Lumicore products, including the LumiLink 400G-ZR+, infringed those patents.
20. OWS admits that Lumicore responded to the January 15, 2023 licensing letter on February 28, 2023, through outside patent litigation counsel at Hawthorne Vega & Cruz LLP. In that response, Lumicore disputed infringement and raised questions about the validity of the identified patents.
21. OWS admits that an in-person licensing meeting took place in Austin, Texas, on April 20, 2023. The meeting was attended by Angela Reeves (FairPoint Licensing Group, LLC), Rebecca Tanaka (OWS, Vice President of intellectual Property), Raymond Bautista (Lumicore, General Counsel), and Catherine "Kate" Rourke (Hawthorne Vega & Cruz LLP, lead outside counsel for Lumicore). During this meeting, the parties discussed the scope of the Asserted Patents, the accused products, and the terms of a potential licensing arrangement.
22. OWS admits that FairPoint Licensing Group, LLC sent a second licensing letter to Lumicore on May 15, 2023. The May 15, 2023 letter added the '015 Patent (which had issued on August 2, 2022) to the set of patents at issue and expanded the scope of accused products to include the LumiLink 800G-DR8, which Lumicore had commercially launched in the first quarter of 2023.
23. OWS admits that Lumicore, through its General Counsel Raymond Bautista, declined to take a license under the Asserted Patents on July 10, 2023. In its July 10, 2023 letter, Lumicore stated that it had obtained "competent legal opinions" concluding that its products do not infringe the Asserted Patents.
24. OWS denies that the pre-suit licensing contacts described in the Counterclaims in any way undermine, weaken, or negate OWS's claims of infringement or willful infringement. To the contrary, the extensive pre-suit notice provided to Lumicore — spanning from January 15, 2023 through July 10, 2023, and including detailed claim charts and an in-person technical presentation — strengthens OWS's position that Lumicore acted with knowledge of the Asserted Patents and continued to infringe willfully.
25. OWS denies any characterization of the licensing negotiations that suggests OWS's licensing positions were unreasonable, made in bad faith, or otherwise improper. OWS and its licensing agent, FairPoint Licensing Group, LLC, engaged in good-faith licensing efforts, consistent with industry practice, and offered Lumicore commercially reasonable terms for a license.
II. RESPONSES TO SPECIFIC COUNTERCLAIMS
Response to Counterclaim I: Declaratory Judgment of Non-Infringement of the '847 Patent
26. OWS denies each and every allegation set forth in Counterclaim I of Lumicore's Counterclaims.
27. OWS affirmatively avers that its Complaint (D.E. 1, Count I) properly alleges that the LumiLink 400G-ZR+ and the LumiLink 800G-DR8 infringe asserted Claims 1, 3, 5, 9, and 14 of the '847 Patent, titled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss." OWS's Infringement Contentions (P.R. 3-1, D.E. 32) detail, on a claim-by-claim and limitation-by-limitation basis, how each Accused Product meets each element of the asserted claims.
28. OWS further avers that the teardown analyses performed by Benchmark Semiconductor Analysis, LLC confirm the presence of multi-channel silicon photonic waveguide multiplexer structures with low insertion loss in the Accused Products. The die-level photomicrographs and spectral measurements contained in the Benchmark reports demonstrate that the Accused Products include waveguide multiplexer architectures that correspond to the structures described and claimed in the '847 Patent.
29. OWS denies that Lumicore is entitled to a declaratory judgment of non-infringement of the '847 Patent and respectfully requests that Counterclaim I be dismissed in its entirety with prejudice.
Response to Counterclaim II: Declaratory Judgment of Non-Infringement of the '193 Patent
30. OWS denies each and every allegation set forth in Counterclaim II of Lumicore's Counterclaims.
31. OWS affirmatively avers that its Complaint (D.E. 1, Count II) properly alleges that all three Accused Products — the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR — infringe asserted Claims 1, 3, 7, 10, 15, and 18 of the '193 Patent, titled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate." OWS's Infringement Contentions (P.R. 3-1, D.E. 32) provide the detailed basis for these infringement allegations.
32. OWS further avers that it asserts both literal infringement and infringement under the doctrine of equivalents as to Claims 3 and 7 of the '193 Patent. Specifically, OWS contends that even if Lumicore's accused designs do not literally satisfy the "coherent detection module" limitation recited in Claims 3 and 7, the corresponding elements in the Accused Products perform substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed "coherent detection module." The doctrine of equivalents prevents Lumicore from escaping infringement liability through insubstantial design-arounds of the patented technology.
33. OWS denies that Lumicore is entitled to a declaratory judgment of non-infringement of the '193 Patent and respectfully requests that Counterclaim II be dismissed in its entirety with prejudice.
Response to Counterclaim III: Declaratory Judgment of Non-Infringement of the '562 Patent
34. OWS denies each and every allegation set forth in Counterclaim III of Lumicore's Counterclaims.
35. OWS affirmatively avers that its Complaint (D.E. 1, Count III) properly alleges that the LumiLink 400G-ZR+ and the LumiLink 800G-DR8 infringe asserted Claims 1, 4, 6, and 11 of the '562 Patent, titled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks." OWS's Infringement Contentions (P.R. 3-1, D.E. 32) detail, on a claim-by-claim and limitation-by-limitation basis, how each Accused Product meets each element of the asserted claims.
36. OWS further avers that it acquired the '562 Patent from Solara Optics, Inc. pursuant to the Asset Purchase Agreement dated June 15, 2018, and that OWS holds clear and undisputed title to the '562 Patent. The assignment was properly executed, recorded at the USPTO, and is a matter of public record. There is no defect in OWS's chain of title to the '562 Patent, and OWS has full right and standing to assert the '562 Patent in this action.
37. OWS denies that Lumicore is entitled to a declaratory judgment of non-infringement of the '562 Patent and respectfully requests that Counterclaim III be dismissed in its entirety with prejudice.
Response to Counterclaim IV: Declaratory Judgment of Non-Infringement of the '015 Patent
38. OWS denies each and every allegation set forth in Counterclaim IV of Lumicore's Counterclaims.
39. OWS affirmatively avers that its Complaint (D.E. 1, Count IV) properly alleges that the LumiLink 800G-DR8 and the LumiEdge 1600G-LR infringe asserted Claims 1, 5, 8, 12, and 16 of the '015 Patent, titled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers." OWS's Infringement Contentions (P.R. 3-1, D.E. 32) detail the specific bases for these infringement allegations.
40. OWS further avers that it asserts both literal infringement and infringement under the doctrine of equivalents as to Claim 12 of the '015 Patent. Specifically, OWS contends that even if Lumicore's accused designs do not literally satisfy the "two-dimensional sub-wavelength grating" limitation recited in Claim 12, the corresponding elements in the Accused Products perform substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed "two-dimensional sub-wavelength grating." The differences between the accused element and the claimed limitation, if any, are insubstantial and do not permit Lumicore to avoid infringement.
41. OWS denies that Lumicore is entitled to a declaratory judgment of non-infringement of the '015 Patent and respectfully requests that Counterclaim IV be dismissed in its entirety with prejudice.
Response to Counterclaim V: Invalidity of the Asserted Patents Under 35 U.S.C. §§ 102 and 103
42. OWS denies each and every allegation set forth in Counterclaim V of Lumicore's Counterclaims.
43. OWS denies that any claim of the '847, '193, '562, or '015 Patents is invalid under 35 U.S.C. § 102 (anticipation) or 35 U.S.C. § 103 (obviousness), whether based on the prior-art references cited by Lumicore or on any other basis.
44. OWS affirmatively avers that all four Asserted Patents enjoy a statutory presumption of validity under 35 U.S.C. § 282. This presumption places the burden squarely on Lumicore to prove invalidity of each asserted claim by clear and convincing evidence. See Kestrel Partners LLC v. i4i Ltd. P'ship, 564 U.S. 91, 95 (2011). Lumicore cannot carry this heavy burden.
45. OWS notes that Lumicore's Invalidity Contentions served pursuant to Patent Rule 3-3 on October 14, 2024 (D.E. 36) cite twenty-three (23) prior-art references in support of its invalidity theories. OWS contends that none of these references, individually or in any combination, anticipates or renders obvious any asserted claim of the Asserted Patents. Without limiting the generality of the foregoing, OWS specifically responds as follows:
(a) As to the '847 Patent: Lumicore relies upon Takahashi et al., "Dense WDM Silicon Photonic MUX," published in IEEE Photonics Technology Letters in March 2014. This reference does not anticipate any asserted claim of the '847 Patent because it fails to disclose key limitations of the claimed multi-channel waveguide multiplexer structure, including, without limitation, the specific arrangement of cascaded Mach-Zehnder interferometers and the low insertion loss characteristics as claimed. The Takahashi reference describes a fundamentally different multiplexer architecture that does not disclose each and every element of any asserted claim.
(b) As to the '562 Patent: Lumicore relies upon U.S. Patent No. 8,412,007 (Bergmann) and the conference paper authored by Dr. Li Wei, titled "Thermal Solutions for PICs," presented at OFC 2013 in March 2013. Neither of these references, individually or in combination, renders the asserted claims of the '562 Patent obvious. These references fail to disclose the specific embedded micro-channel heat-sink configuration as claimed, including the claimed channel dimensions, the integration method with the photonic integrated circuit substrate, and the closed-loop thermal feedback mechanism recited in the asserted claims. A person of ordinary skill in the art at the time of the invention would not have been motivated to combine these references in the manner suggested by Lumicore, and doing so would not have yielded the claimed invention without the benefit of hindsight.
(c) As to the '847 Patent (additional reference): Lumicore also relies upon PCT/EP2015/071234 (Simonsen, published September 17, 2015). This international application does not, alone or in combination with any other cited reference, render the asserted claims of the '847 Patent obvious. The Simonsen application addresses a different type of photonic multiplexer structure and does not teach or suggest the specific low-insertion-loss waveguide configuration claimed in the '847 Patent.
(d) As to the '015 Patent: Lumicore asserts a prior-conception defense based on purported internal design documents allegedly dated 2016–2017. This defense fails as a matter of law and fact. Lumicore's purported internal design documents are unsupported by adequate corroboration as required under the law of prior invention. See Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998) (requiring corroborating evidence beyond the testimony of the alleged inventor). Moreover, even assuming the existence of such documents, Lumicore has not demonstrated reduction to practice, diligence, or any of the other elements required to establish a prior-invention defense.
46. OWS further avers that strong secondary considerations of non-obviousness support the validity of all Asserted Patents. These secondary considerations include, but are not limited to, the following:
(a) Commercial Success: OWS's commercial products embodying the patented inventions — including the OWS-400ZR and OWS-800XR product lines — have achieved significant commercial success. Approximately $310 million of OWS's $487.3 million in fiscal year 2023 revenue is attributable to products that practice the Asserted Patents. This commercial success is directly tied to the patented innovations and is a strong indicator of non-obviousness.
(b) Long-Felt but Unsolved Need: The silicon photonics industry experienced a long-felt but unsolved need for low-insertion-loss waveguide multiplexing in silicon-photonic transceiver modules. Prior to OWS's innovations, industry participants struggled to achieve acceptable insertion-loss performance in multi-channel silicon photonic multiplexer designs while maintaining manufacturability at commercial scale.
(c) Failure of Others: At least three competitors in the silicon photonics industry attempted to develop similar low-insertion-loss waveguide multiplexer designs and thermal management solutions for photonic integrated circuits before OWS's innovations, but without success. These failed efforts underscore the non-obvious nature of OWS's patented inventions.
(d) Copying by Lumicore: The evidence demonstrates that Lumicore copied OWS's patented technology in designing the Accused Products. Specifically, the deposition testimony of Dr. Sandra Michaud, Lumicore's Chief Technology Officer, taken on November 19, 2024, reveals that Lumicore's engineering team reviewed OWS's published patent application No. 2018/0123456 during the design phase of the LumiLink 400G-ZR+. OWS further anticipates that the testimony of former Lumicore engineer Melissa Chen, now employed at Veridian Photonics, Inc., will provide additional evidence of Lumicore's access to and reliance upon OWS's patented technology during the development of the Accused Products.
47. OWS denies that any of the twenty-three (23) prior-art references cited in Lumicore's Invalidity Contentions, individually or in any combination, invalidates any asserted claim of any Asserted Patent.
48. OWS notes that no inter partes review petitions have been filed to date against any of the Asserted Patents at the USPTO's Patent Trial and Appeal Board.
49. OWS denies that Lumicore is entitled to a declaratory judgment of invalidity of any Asserted Patent and respectfully requests that Counterclaim V be dismissed in its entirety with prejudice.
Response to Counterclaim VI: Unenforceability / Inequitable Conduct
50. OWS denies each and every allegation set forth in Counterclaim VI of Lumicore's Counterclaims.
51. OWS denies that Dr. Jian-Wei Huang, OWS's Chief Technology Officer and a named inventor on certain of the Asserted Patents, or any other individual associated with OWS or involved in the prosecution of the Asserted Patents, engaged in inequitable conduct before the United States Patent and Trademark Office during the prosecution of any of the Asserted Patents.
52. OWS affirmatively avers that Lumicore's allegation — that Dr. Huang failed to disclose a prior publication to the USPTO during the prosecution of the '193 Patent — is without merit for the following reasons:
(a) The reference at issue was cumulative of prior art already cited by the patent examiner and considered by the USPTO during prosecution of the '193 Patent. The prosecution history of the '193 Patent demonstrates that the examiner conducted a thorough prior-art search and considered numerous references in the same field, including references that disclosed the same or substantially similar subject matter as the allegedly undisclosed reference. Disclosure of a cumulative reference is not "but-for" material to patentability.
(b) There is no evidence of specific intent to deceive the USPTO, as required under the heightened standard established in Brightmoor & Co., Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc). The Federal Circuit has made clear that inequitable conduct requires proof that the applicant made a deliberate decision to withhold a known material reference with the specific intent to deceive the USPTO. Negligence, oversight, or even gross negligence does not satisfy this intent requirement. Id. at 1290. Lumicore cannot establish this element.
(c) Lumicore's inequitable conduct theory fails to satisfy the dual requirements of but-for materiality and specific intent to deceive. Under Brightmoor & Co., both elements must be proven by clear and convincing evidence, and the intent element must be the single most reasonable inference that can be drawn from the evidence. Id. at 1290–91. Lumicore cannot meet this burden.
53. OWS further avers that all four Asserted Patents were prosecuted by Cascade IP Advisors, LLC, with Dr. Martin Chu serving as lead patent prosecution attorney. The prosecution of the Asserted Patents was conducted in full accordance with all applicable duties of disclosure, candor, and good faith before the United States Patent and Trademark Office, as set forth in 37 C.F.R. § 1.56. Multiple Information Disclosure Statements were filed during the prosecution of each patent, disclosing relevant prior art known to the applicants and their patent counsel.
54. OWS denies that any of the Asserted Patents is unenforceable for inequitable conduct or for any other reason, and respectfully requests that Counterclaim VI be dismissed in its entirety with prejudice.
III. AFFIRMATIVE DEFENSES TO COUNTERCLAIMS
Without admitting any of the allegations in Lumicore's Counterclaims, and without assuming any burden of proof that would otherwise rest with Lumicore, OWS asserts the following affirmative defenses to Lumicore's Counterclaims:
First Affirmative Defense: Failure to State a Claim
Lumicore's Counterclaims, individually and collectively, fail to state claims upon which relief can be granted under Rule 12(b)(6) of the Federal Rules of Civil Procedure. The Counterclaims are conclusory, lack sufficient factual allegations to support the relief requested, and do not satisfy the pleading standards set forth in Thackeray Corporation v. Twombly, 550 U.S. 544 (2007), and Ashcroft v. Iqbal, 556 U.S. 662 (2009).
Second Affirmative Defense: Statutory Presumption of Validity
Each of the Asserted Patents — U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015 — is presumed valid under 35 U.S.C. § 282. This presumption may only be overcome by clear and convincing evidence. See Kestrel Partners LLC v. i4i Ltd. P'ship, 564 U.S. 91, 95 (2011). Lumicore bears the burden of proving invalidity by clear and convincing evidence as to each asserted claim, and it cannot carry this burden based on the prior-art references and theories set forth in its Counterclaims and Invalidity Contentions.
Third Affirmative Defense: Prosecution History Estoppel (as to Lumicore's Inequitable Conduct Counterclaim)
To the extent Lumicore's inequitable conduct counterclaim (Counterclaim VI) is based on alleged non-disclosure of prior art during prosecution of the Asserted Patents, OWS asserts that the prosecution histories of all Asserted Patents demonstrate full compliance with the duty of candor and good faith set forth in 37 C.F.R. § 1.56. The prosecution records foreclose Lumicore's theory of inequitable conduct. The prior art at issue was either independently identified and cited by the patent examiner during examination, disclosed by the applicants in Information Disclosure Statements filed during prosecution, or cumulative of references already of record before the USPTO. The prosecution histories, taken as a whole, demonstrate that no material information was withheld from the USPTO with any intent to deceive.
Fourth Affirmative Defense: Waiver
Lumicore has waived certain arguments and defenses by failing to timely raise them or by conduct inconsistent with the positions asserted in its Counterclaims. Specifically, in its July 10, 2023 letter declining to take a license under the Asserted Patents, Lumicore stated that it had obtained "competent legal opinions" concluding that its products do not infringe. However, Lumicore has asserted the attorney-client privilege over those legal opinions and has refused to produce them in discovery. OWS's Motion to Compel production of those legal opinions remains pending before this Court at Docket Entry 40. To the extent Lumicore relies upon or places at issue any advice-of-counsel defense in connection with its Counterclaims, or seeks to rely on the existence of favorable legal opinions to bolster its declaratory judgment counterclaims, OWS contends that Lumicore has waived the attorney-client privilege and work-product protection over those opinions by affirmatively placing their substance at issue in this litigation. See In re EchoStar Commc'ns Corp., 448 F.3d 1294, 1299 (Fed. Cir. 2006).
Fifth Affirmative Defense: Estoppel / Unclean Hands
Lumicore is estopped from asserting invalidity and/or unenforceability of the Asserted Patents, and its Counterclaims are barred or limited by the doctrine of unclean hands, to the extent that Lumicore's own conduct is inconsistent with the equitable relief it seeks. Specifically, Lumicore's conduct includes: (a) its engineering team's review of OWS's published patent application No. 2018/0123456 during the design phase of the LumiLink 400G-ZR+, as admitted by Dr. Sandra Michaud in her November 19, 2024 deposition; (b) its continued manufacture, use, offer for sale, sale, and importation of the Accused Products after receiving detailed pre-suit notice of infringement beginning on January 15, 2023; and (c) its commercial launch of an additional accused product, the LumiEdge 1600G-LR, in the fourth quarter of 2023, after receiving pre-suit notice. This conduct is fundamentally inconsistent with the equitable relief Lumicore seeks through its Counterclaims, and the doctrine of unclean hands precludes Lumicore from obtaining the relief it requests.
Sixth Affirmative Defense: Laches (as to Counterclaims)
To the extent applicable, Lumicore's Counterclaims are barred or limited by the doctrine of laches. Lumicore unreasonably delayed in asserting its invalidity and unenforceability theories despite having knowledge of the Asserted Patents since at least January 15, 2023 — the date of FairPoint Licensing Group, LLC's first licensing letter to Lumicore — and having retained Hawthorne Vega & Cruz LLP as outside patent litigation counsel no later than February 28, 2023. Lumicore's delay in asserting its invalidity and inequitable conduct theories, and any resulting prejudice to OWS, support application of the laches defense to bar or limit the relief available on Lumicore's Counterclaims.
Seventh Affirmative Defense: No Inequitable Conduct — Failure to Meet Brightmoor & Co. Standard
Lumicore cannot satisfy the heightened standard for inequitable conduct established by the Federal Circuit in Brightmoor & Co., Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc). Specifically, Lumicore cannot prove by clear and convincing evidence both: (a) that the allegedly undisclosed reference was but-for material to the issuance of any asserted claim of any Asserted Patent, i.e., that the USPTO would not have allowed the claim had it been aware of the reference; and (b) that the specific intent of the applicant or patent prosecution counsel was to deceive the USPTO by withholding the reference. Id. at 1290–91. As the Federal Circuit has emphasized, inequitable conduct is a serious allegation with severe consequences — including rendering an entire patent unenforceable — and must be supported by clear and convincing evidence of both elements, not mere inference or speculation. OWS avers that neither element can be satisfied here.
Eighth Affirmative Defense: Reservation of Defenses
OWS reserves the right to assert additional affirmative defenses to Lumicore's Counterclaims as discovery in this matter continues and as additional facts and circumstances become known. Discovery is ongoing in this action. Pursuant to the Court's Docket Control Order (D.E. 28), the fact discovery deadline is May 1, 2025, and the expert discovery deadline is August 15, 2025. OWS does not intend its identification of the foregoing affirmative defenses to be exhaustive and expressly reserves all rights to supplement its defenses consistent with the Federal Rules of Civil Procedure and this Court's scheduling orders.
IV. PRAYER FOR RELIEF
WHEREFORE, Plaintiff/Counterclaim-Defendant Optiwave Semiconductor Corp. respectfully requests that the Court enter judgment as follows:
1. Deny and dismiss each of Lumicore's Counterclaims — Counterclaim I (Declaratory Judgment of Non-Infringement of the '847 Patent), Counterclaim II (Declaratory Judgment of Non-Infringement of the '193 Patent), Counterclaim III (Declaratory Judgment of Non-Infringement of the '562 Patent), Counterclaim IV (Declaratory Judgment of Non-Infringement of the '015 Patent), Counterclaim V (Invalidity Under 35 U.S.C. §§ 102 and 103), and Counterclaim VI (Unenforceability / Inequitable Conduct) — in their entirety, with prejudice;
2. Enter judgment declaring that U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015 are valid and enforceable;
3. Enter judgment declaring that Lumicore is not entitled to any declaratory judgment of non-infringement of any Asserted Patent;
4. Award OWS its costs and reasonable attorneys' fees incurred in defending against Lumicore's Counterclaims, to the extent permitted by law, including under 35 U.S.C. § 285 if this case is deemed exceptional; and
5. Grant such other and further relief as the Court deems just and proper.
V. JURY DEMAND
Plaintiff/Counterclaim-Defendant Optiwave Semiconductor Corp. hereby demands a trial by jury on all issues so triable, including but not limited to all issues raised by Lumicore's Counterclaims and all affirmative defenses asserted herein. This demand is made pursuant to Rule 38 of the Federal Rules of Civil Procedure and the Seventh Amendment to the United States Constitution.
Respectfully submitted,
Dated: July 22, 2024
CALDERWOOD & HARKNESS LLP
By: ________
Alan Ngo (CA Bar No. 287451; admitted pro hac vice E.D. Tex.) Responsible Partner, IP Litigation 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 443-7200 Facsimile: (213) 443-7201
Email: alan.ngo@calderwoodharkness.com
Marcus Delgado (TX Bar No. 24098372; CA Bar No. 301784) Billing Partner, IP Litigation 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 443-7200
Email: marcus.delgado@calderwoodharkness.com
Wendy Schultz (CA Bar No. 312659; admitted pro hac vice E.D. Tex.) Lead Associate, IP Litigation 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 443-7200
Email: wendy.schultz@calderwoodharkness.com
Omar Siddiqui (CA Bar No. 319847; admitted pro hac vice E.D. Tex.) Working Associate, IP Litigation 1201 F Street NW, Suite 700 Washington, DC 20004 Telephone: (202) 887-5400
Email: omar.siddiqui@calderwoodharkness.com
WHITMORE & CALLAHAN LLP
James "Jim" Callahan (TX Bar No. 03851290) Local Counsel Partner 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 531-8800 Facsimile: (903) 531-8801
Email: jim.callahan@whitmorecallahan.com
Attorneys for Plaintiff/Counterclaim-Defendant Optiwave Semiconductor Corp.
CERTIFICATE OF SERVICE
I hereby certify that on July 22, 2024, the foregoing Plaintiff/Counterclaim-Defendant Optiwave Semiconductor Corp.'s Answer to Defendant/Counterclaim-Plaintiff Lumicore Technologies, Inc.'s Counterclaims was served on all counsel of record via the Court's CM/ECF electronic filing system, which will send notification of such filing to the following:
Catherine "Kate" Rourke Darren Cho Samantha Briggs Rohan Iyer HAWTHORNE VEGA & CRUZ LLP 600 Congress Avenue, Suite 2400 Austin, Texas 78701
Maria Garza TRASK EDDINGTON LLP 425 East Front Street, Suite 300 Tyler, Texas 75701
Counsel for Defendant/Counterclaim-Plaintiff Lumicore Technologies, Inc.
By: ________
Alan Ngo CALDERWOOD & HARKNESS LLP
OPTIWAVE SEMICONDUCTOR CORP.,
Plaintiff/Counterclaim-Defendant,
Civil Action No. 2:24-cv-00319-JRG
v.
Judge James R. Gilstrap
LUMICORE TECHNOLOGIES, INC.,
Defendant/Counterclaim-Plaintiff.