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

OPTIWAVE SEMICONDUCTOR CORP.,

Plaintiff,

LUMICORE TECHNOLOGIES, INC.,

Defendant.

Case No. 2:24-cv-00319-JRG

Judge James R. Gilstrap

DECLARATION OF REBECCA TANAKA IN SUPPORT OF PLAINTIFF'S OPPOSITION TO DEFENDANT'S MOTION TO TRANSFER VENUE

Filed: July 8, 2024

I. INTRODUCTION AND DECLARANT IDENTIFICATION

1. I, Rebecca Tanaka, declare under penalty of perjury pursuant to 28 U.S.C. § 1746 as follows:

2. My full name is Rebecca Tanaka. I am the General Counsel of Optiwave Semiconductor Corp. ("OWS" or "Optiwave Semi"). I have been employed by OWS since March 2017 — a period of over seven years — and am responsible for overseeing all legal affairs of the company, including intellectual property portfolio management and licensing, litigation, corporate governance, regulatory compliance, and commercial contracting. Prior to joining OWS, I served as Associate General Counsel at Visteon Photonics, Inc. and as an associate at Brennan & Ashford LLP, where I practiced patent litigation and IP transactional law for approximately six years.

3. OWS is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business and corporate headquarters located at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054. OWS is a fabless semiconductor company specializing in the design, development, and sale of silicon photonics chipsets and transceiver modules for data-center interconnect applications. OWS does not operate its own fabrication facilities but instead contracts with leading semiconductor foundries for the manufacture of its proprietary photonic integrated circuits.

4. OWS is the third-largest U.S. supplier of silicon-photonics transceiver modules for hyperscale data centers, serving many of the world's largest cloud services providers and enterprise data-center operators. For the fiscal year ended December 31, 2023, OWS reported total revenue of $487.3 million and net income of $61.4 million, as reflected in the company's audited financial statements prepared and certified by Gresham & Whitfield LLP, the company's independent registered public accounting firm.

5. OWS holds a robust intellectual property portfolio consisting of 142 issued U.S. utility patents and 58 pending U.S. patent applications, covering technologies related to silicon photonics waveguide structures, coherent optical transceiver architectures, thermal management solutions for photonic integrated circuits, polarization-diverse grating couplers, and related semiconductor fabrication methods. OWS's key product families include the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver modules, which compete directly in the market segments served by the accused products in this litigation.

6. The majority owner of OWS is Ridgeline Capital Partners, LP, a private equity firm that acquired a 55% ownership stake in OWS in 2019. Franklin Osei, a Managing Director of Ridgeline Capital Partners, serves as Chair of the OWS Board of Directors as Ridgeline's designee. The remaining equity is held by OWS's founders, current and former employees, and other institutional investors.

7. I have personal knowledge of the facts stated in this declaration. My knowledge is based on my role as General Counsel of OWS, my direct involvement in pre-suit licensing negotiations with Defendant Lumicore Technologies, Inc. ("Lumicore"), my oversight of OWS's commercial relationships with customers in the Eastern District of Texas and elsewhere, my review of OWS's business records maintained in the ordinary course of business, and my coordination with OWS's outside litigation counsel in connection with this action. Where I refer to information derived from business records, those records were made at or near the time of the events they describe, by or from information transmitted by persons with knowledge of those events, and are kept in the course of regularly conducted business activity.

II. PURPOSE OF DECLARATION

8. I submit this declaration in support of Plaintiff Optiwave Semiconductor Corp.'s Opposition to Defendant Lumicore Technologies, Inc.'s Motion to Transfer Venue (D.E. 13), filed June 24, 2024, in which Lumicore seeks to transfer this action from the Eastern District of Texas, marshall Division, to the Western District of Texas, Austin Division.

9. The purpose of this declaration is to set forth facts within my knowledge that are relevant to the Court's analysis of the transfer factors under 28 U.S.C. § 1404(a). Specifically, this declaration addresses: (a) Lumicore's commercial presence and sales activity in the Eastern District of Texas, including its physical office in Tyler, Texas, and its sales of accused products to customers with facilities in this district; (b) OWS's own customer relationships and business contacts within the Eastern District of Texas; (c) the location of relevant party, non-party, and third-party witnesses and documents; and (d) the convenience factors supporting retention of venue in this district.

III. BACKGROUND ON THE ASSERTED PATENTS AND THIS LITIGATION

10. On April 22, 2024, OWS filed this patent infringement action against Lumicore Technologies, Inc. ("Lumicore"), Case No. 2:24-cv-00319-JRG, in the United States District Court for the Eastern District of Texas, marshall Division. The Complaint asserts infringement of four U.S. utility patents owned by OWS, which are described in detail below.

11. The first asserted patent is U.S. Patent No. 10,234,847 (the "'847 Patent"), entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss." The '847 Patent was filed on September 14, 2016, and issued on March 19, 2019. The '847 Patent is directed to novel waveguide multiplexer structures that achieve significantly reduced insertion loss across multiple wavelength channels in silicon photonic circuits, enabling higher bandwidth and improved signal integrity in data-center interconnect applications. OWS is the original assignee of the '847 Patent.

12. The second asserted patent is U.S. Patent No. 10,891,193 (the "'193 Patent"), entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate." The '193 Patent was filed on April 7, 2017, and issued on January 12, 2021. The '193 Patent covers integrated coherent optical transceiver architectures fabricated on a silicon substrate, incorporating novel modulator and receiver designs that enable high-bandwidth data transmission over metropolitan and long-haul fiber-optic links. OWS is the original assignee of the '193 Patent.

13. The third asserted patent is U.S. Patent No. 9,678,562 (the "'562 Patent"), entitled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks." The '562 Patent was filed on November 22, 2014, and issued on June 13, 2017. The '562 Patent was originally assigned to Solara Optics, Inc. OWS acquired all right, title, and interest in the '562 Patent from Solara Optics pursuant to an Asset Purchase Agreement dated June 15, 2018. The '562 Patent claims methods for embedding micro-channel heat sink structures within photonic integrated circuits to manage thermal dissipation — a critical challenge in high-density silicon photonics modules operating at data rates of 400 Gbps and above.

14. The fourth asserted patent is U.S. Patent No. 11,402,015 (the "'015 Patent"), entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers." The '015 Patent was filed on August 30, 2019, and issued on August 2, 2022. The '015 Patent is directed to polarization-diverse grating coupler designs that improve coupling efficiency between optical fibers and silicon photonic waveguides, reducing polarization-dependent loss and enhancing the performance of transceiver modules across a range of operating conditions. OWS is the original assignee of the '015 Patent.

15. The accused products in this action are Lumicore's LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR transceiver modules, each of which OWS alleges infringes one or more claims of the asserted patents. These products are silicon-photonics-based transceiver modules that compete directly with OWS's own product families in the hyperscale data-center interconnect market.

16. OWS seeks compensatory damages of approximately $210 million for Lumicore's past and ongoing infringement of the asserted patents, together with enhanced damages for willful infringement, pre-judgment and post-judgment interest, and a permanent injunction prohibiting Lumicore from further infringement.

IV. LUMICORE'S PRESENCE IN THE EASTERN DISTRICT OF TEXAS

A. Lumicore's Tyler, Texas Office

17. Lumicore Technologies, Inc. is a corporation organized and existing under the laws of the State of Delaware. Lumicore's corporate headquarters is located at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759, which is situated within the Western District of Texas.

18. However, in addition to its Austin headquarters, Lumicore maintains a sales office and technical support center at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701. Tyler is located in Smith County, within the Eastern District of Texas, Tyler Division. A true and correct copy of publicly available information confirming the existence and address of this office is attached hereto as Exhibit 1.

19. Based on OWS's investigation and my review of publicly available information — including Lumicore's own website, publicly available Westmark Health IT profiles of Lumicore employees, press releases, and industry directory listings — the Tyler office is staffed by Lumicore employees who engage in sales, customer outreach, post-sale technical support, and relationship management for customers located in the Eastern District of Texas and the surrounding region. The Tyler office serves as a regional hub from which Lumicore's sales and technical personnel interact with data-center operators and networking companies operating facilities in East Texas and the Dallas-Fort Worth metropolitan area.

20. The Tyler office is not a mere mailing address, registered-agent location, or nominal presence of the kind that some defendants have used to manufacture or disclaim venue ties. Rather, it is a functioning commercial facility from which Lumicore actively conducts business on a regular and ongoing basis, including the sale, promotion, and technical support of the very products accused of infringement in this litigation — the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR transceiver modules. I understand, based on OWS's competitive intelligence gathering, that the Tyler office has been operational since at least mid-2022 and that Lumicore has made capital investments in equipping that office with demonstration equipment, laboratory space for product evaluation, and dedicated support infrastructure.

B. Lumicore's Sales of Accused Products in the Eastern District

21. Through my role as General Counsel and my review of OWS's competitive intelligence reports, publicly available procurement records, and information obtained from OWS's own customers and sales team, I am aware that Lumicore has sold substantial quantities of accused products to customers with operations and facilities located within the Eastern District of Texas.

22. Specifically, Lumicore has sold accused products to at least three customers with significant operations in this district:

a. Pinnacle Data Systems, LLC — Pinnacle Data Systems is a data-center operator that maintains colocation and enterprise data-center facilities at 1800 Judson Road, Longview, Texas 75601. Longview is located in Gregg County, within the Eastern District of Texas. Pinnacle Data Systems is a significant purchaser of silicon-photonics transceiver modules for its data-center interconnect infrastructure, and OWS's competitive intelligence indicates that Pinnacle has purchased Lumicore's LumiLink 400G-ZR+ and LumiLink 800G-DR8 modules for deployment at its Longview facility.

b. Frontier Cloud Services, Inc. — Frontier Cloud Services is a regional cloud services provider that operates data-center facilities at 400 East Houston Street, marshall, Texas 75670. Marshall is located in Harrison County and is the seat of the marshall Division of the Eastern District of Texas — the very division in which this case is pending. Frontier Cloud Services has purchased Lumicore's accused transceiver products for use in its marshall data-center operations.

c. CrossPoint Networking Corp. — CrossPoint Networking is a networking company with facilities at 7500 Dallas Parkway, Suite 200, Plano, Texas 75024. While Plano is located in Collin County, CrossPoint's operations extend into the Eastern District of Texas, and the company maintains network infrastructure and customer-facing operations within the district. CrossPoint is a purchaser of Lumicore's LumiLink 800G-DR8 and LumiEdge 1600G-LR modules.

23. These are not isolated, de minimis, or incidental sales. Each of these customers is a significant purchaser of silicon-photonics transceiver modules — the very product category at issue in this litigation. The accused products — LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR modules — have been deployed and are currently in use at data-center facilities operated by these customers within the Eastern District of Texas. Publicly available records and other information confirming sales of accused products to these customers are attached hereto as Exhibit 2.

24. The presence of accused products at customer facilities within this district is not merely relevant to the question of personal jurisdiction or venue propriety; it is also directly relevant to the merits of OWS's infringement claims, as it establishes that acts of use and sale of the accused products have occurred within the Eastern District of Texas.

V. OWS'S CUSTOMER RELATIONSHIPS AND BUSINESS CONTACTS IN THE EASTERN DISTRICT

25. OWS also maintains significant business contacts with customers in the Eastern District of Texas. OWS sells its competing transceiver products — including the OWS-400ZR and OWS-800XR transceiver modules — to data-center operators and cloud services providers that maintain facilities within this district. OWS's sales team regularly interacts with customers in East Texas, and OWS's products are deployed at data-center facilities located within the district's boundaries.

26. OWS and Lumicore compete head-to-head for the same customer accounts in the Eastern District of Texas. Through my review of OWS's internal sales reports and competitive intelligence, I have direct evidence that Lumicore's accused products have displaced OWS's products at customer locations within the Eastern District. In multiple instances, OWS has lost sales to Lumicore at data-center facilities where OWS's transceiver modules were previously the primary or sole silicon-photonics interconnect solution.

27. This competitive overlap in the Eastern District of Texas is directly relevant to OWS's lost-profits damages theory. OWS's damages expert has prepared a preliminary analysis based on a 38.2% market-share displacement model, which quantifies the lost profits attributable to Lumicore's infringement by reference to the sales that OWS would have made but for the availability of the infringing products. The fact that both OWS and Lumicore serve overlapping customer bases within the Eastern District of Texas makes this district a particularly appropriate forum for the resolution of damages issues.

28. Additionally, potential fact witnesses employed by OWS's and Lumicore's Eastern District customers may have knowledge of purchasing decisions, the role of patented features in product selection and evaluation, competitive pricing dynamics, product performance and reliability, and the impact of the accused products on OWS's market position — all of which are relevant to infringement, damages, and injunctive relief in this case.

VI. PRE-SUIT LICENSING CONTACTS AND KNOWLEDGE OF INFRINGEMENT

29. As General Counsel of OWS, I was directly and personally involved in the pre-suit licensing efforts directed at Lumicore. The timeline of those efforts is set forth below and is relevant to the willfulness of Lumicore's infringement and to the question of whether this litigation was precipitated by genuine and exhaustive efforts to resolve the dispute without the need for court intervention.

30. In October 2022, OWS's internal engineering team — led by Dr. David Naranjo, Vice President of Engineering — identified potential infringement of OWS's patents by Lumicore's LumiLink 400G-ZR+ transceiver module, which Lumicore had launched commercially in the third quarter of 2022. The engineering team's initial assessment was based on a review of publicly available product specifications, datasheets, and marketing materials published by Lumicore, which suggested that the LumiLink 400G-ZR+ incorporated waveguide multiplexer structures and thermal management architectures that fell within the scope of OWS's patent claims.

31. In November 2022, at my direction, OWS retained Benchmark Semiconductor Analysis, LLC ("Benchmark"), an independent semiconductor analysis firm located at 2244 Mission College Boulevard, Santa Clara, California 95054, to perform a comprehensive teardown and reverse-engineering analysis of the LumiLink 400G-ZR+ module. Benchmark's scope of work included optical and electron microscopy of the photonic integrated circuit die, cross-sectional analysis of waveguide and thermal management structures, functional testing, and comparison of the observed structures and processes against the claims of the '847, '193, and '562 Patents.

32. On December 12, 2022, Benchmark delivered its teardown report to OWS. The report confirmed the presence of accused multi-channel waveguide multiplexer structures and embedded micro-channel thermal management features in the LumiLink 400G-ZR+ module that correspond to specific claim elements of the '847 Patent and the '562 Patent. The report also identified coherent transceiver architecture elements consistent with the claims of the '193 Patent. Based on this report and the analysis of OWS's internal engineering team, I concluded that there was a substantial basis for OWS to assert its patent rights against Lumicore.

33. OWS then engaged FairPoint Licensing Group, LLC ("FairPoint"), a patent licensing advisory firm located at 500 Sansome Street, Suite 1400, San Francisco, California 94111, to conduct licensing outreach to Lumicore. FairPoint's Managing Director, Angela Reeves, led the engagement. FairPoint was retained to present OWS's licensing position to Lumicore in a professional manner and to negotiate, if possible, a reasonable royalty license that would avoid the need for litigation.

34. On January 15, 2023, FairPoint, acting on behalf of OWS, sent a detailed licensing and notice letter to Lumicore's General Counsel, Raymond Bautista, at Lumicore's Austin headquarters. The letter identified the '847 Patent, the '193 Patent, and the '562 Patent; described OWS's belief that Lumicore's LumiLink 400G-ZR+ product infringed claims of each patent; and invited Lumicore to enter into licensing discussions. A true and correct copy of FairPoint's January 15, 2023 licensing letter is attached hereto as Exhibit 3, subject to any protective order entered by the Court.

35. On February 28, 2023, Lumicore responded to FairPoint's licensing letter through its outside counsel, Hawthorne Vega & Cruz LLP, specifically through partner Catherine "Kate" Rourke of that firm. In its response, Lumicore disputed OWS's infringement allegations and questioned the validity of the identified patents. Lumicore did not provide any detailed technical analysis to support its non-infringement or invalidity positions, nor did it propose any alternative licensing terms or counteroffer.

36. On April 20, 2023, I personally attended an in-person licensing meeting at Lumicore's offices in Austin, Texas. The meeting was attended by Angela Reeves of FairPoint on behalf of OWS, Raymond Bautista in his capacity as General Counsel of Lumicore, and Kate Rourke of Hawthorne Vega & Cruz LLP as Lumicore's outside counsel. At the meeting, OWS presented a detailed claim-chart analysis mapping the claims of the '847, '193, and '562 Patents to the structures and methods identified in the Benchmark teardown report. Lumicore's representatives reiterated their general position that the LumiLink 400G-ZR+ did not infringe and that the asserted patents were of questionable validity, but did not provide any specific technical basis for those contentions. The meeting did not result in a resolution or any agreement to continue negotiations.

37. On May 15, 2023, FairPoint sent a second, supplemental licensing letter to Raymond Bautista, this time adding the '015 Patent — which had issued on August 2, 2022 — and expanding the scope of accused products to include the LumiLink 800G-DR8 module, which Lumicore had launched in the first quarter of 2023. The supplemental letter provided additional claim-chart analysis for the '015 Patent and the newly accused product. A true and correct copy of FairPoint's May 15, 2023 supplemental licensing letter is attached hereto as Exhibit 4, subject to any protective order entered by the Court.

38. On July 10, 2023, Lumicore, again through Kate Rourke of Hawthorne Vega & Cruz LLP, declined to take a license. Lumicore's response stated that it had obtained "competent legal opinions" that its products do not infringe any valid claim of the identified patents, and that Lumicore considered the matter closed. Lumicore did not share copies of any such opinions with OWS or FairPoint.

39. Despite having received detailed notice of OWS's patents and infringement allegations — including claim charts, a teardown analysis, and a face-to-face licensing meeting — Lumicore launched its next-generation LumiEdge 1600G-LR transceiver module in the fourth quarter of 2023. OWS's engineering team promptly analyzed the LumiEdge 1600G-LR and identified it as also infringing claims of the '193 Patent and the '015 Patent. Lumicore's decision to launch the LumiEdge 1600G-LR after receiving extensive notice of OWS's patent rights underscores the willfulness of Lumicore's infringement.

40. Following the failure of the licensing discussions and the launch of the LumiEdge 1600G-LR, OWS determined that litigation was necessary to protect its patent rights. On March 18, 2024, OWS formally engaged Calderwood & Harkness LLP as lead litigation counsel for this action. The Complaint was filed on April 22, 2024.

VII. LOCATION OF WITNESSES AND EVIDENCE

A. Plaintiff's Witnesses and Counsel in or Near the Eastern District

41. OWS's local counsel in this matter, Whitmore & Callahan LLP, is based at 110 North College Avenue, Suite 800, Tyler, Texas 75702 — within the Eastern District of Texas. The lead local counsel attorney for OWS is James "Jim" Callahan, a named partner at Whitmore & Callahan LLP. Mr. Callahan is admitted to practice in the Eastern District of Texas and has extensive experience litigating patent cases before Judge Gilstrap and the other judges of this Court. OWS retained Mr. Callahan specifically for this case based on his familiarity with the procedures and practices of this district.

42. Additionally, customer witnesses employed by Pinnacle Data Systems (Longview, Texas), Frontier Cloud Services (Marshall, Texas), and CrossPoint Networking (Plano, Texas) are located in or near the Eastern District of Texas and would find it convenient to attend hearings, depositions, and trial proceedings in this district. These witnesses are expected to have knowledge relevant to the infringement, damages, and injunction issues in this case, including the selection, procurement, deployment, and performance of both the accused Lumicore products and OWS's competing products at data-center facilities within the district.

B. Defendant's Witnesses

43. While Lumicore's corporate headquarters is located in Austin, Texas, within the Western District, Lumicore also has employees and potential witnesses located at its Tyler, Texas sales and technical support office at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701, which is within the Eastern District of Texas. These employees are likely to have relevant knowledge regarding the sale, marketing, promotion, pricing, and technical support of the accused products to customers located in the Eastern District.

44. Several of Lumicore's customer-facing employees based in Tyler — including sales account managers, field application engineers, and technical support specialists — have regular, ongoing interactions with the Eastern District customers identified above (Pinnacle Data Systems, Frontier Cloud Services, and CrossPoint Networking). These employees may have relevant testimony regarding customer communications, product demonstrations, competitive bidding processes, pricing negotiations, and post-sale support activities that bear on infringement, damages, and willfulness.

45. Furthermore, Lumicore's own local counsel in this matter, Trask Eddington LLP, is located at 425 East Front Street, Suite 300, Tyler, Texas 75701 — within the Eastern District of Texas. Lumicore's lead local counsel attorney is Maria Garza of that firm. The fact that Lumicore itself has retained local counsel in Tyler further demonstrates the practical convenience and suitability of this forum for the litigation.

C. Third-Party Witnesses

46. Employees of Pinnacle Data Systems, Frontier Cloud Services, and CrossPoint Networking who were involved in purchasing decisions for the accused products are potential third-party witnesses in this action. These individuals are located in the Eastern District of Texas and can be compelled to attend trial in this district pursuant to Federal Rule of Civil Procedure 45. Their testimony may address the role of specific patented features — including waveguide multiplexer performance, thermal management capabilities, and polarization-diverse coupling efficiency — in the product selection and procurement process, which is relevant to both infringement and damages.

47. Additionally, I am informed that former Lumicore engineer Melissa Chen, who is now employed at Veridian Photonics, Inc., may have relevant testimony regarding Lumicore's awareness of OWS's patents during the design phase of the LumiLink 400G-ZR+ transceiver module. Ms. Chen's testimony could be relevant to the issues of willfulness and the design-around efforts (or lack thereof) undertaken by Lumicore during the development of the accused products. I understand that Ms. Chen is currently located in the Dallas-Fort Worth metropolitan area, in closer proximity to the Eastern District of Texas than to Austin.

VIII. CONVENIENCE AND JUDICIAL ECONOMY

48. The Eastern District of Texas has well-established patent docket management procedures that promote the efficient resolution of patent disputes. The Court maintains an effective Markman hearing process, utilizes experienced judicial staff and technical advisors, and has a demonstrated track record of bringing patent cases to trial in a timely manner. These procedural advantages are significant and should weigh against disrupting the current forum.

49. Judge James R. Gilstrap has already issued the Scheduling Order in this case (D.E. 27, entered August 12, 2024), which sets the Markman hearing for March 14, 2025, and trial for February 2, 2026. The parties have been operating under this schedule and have begun planning their respective claim construction, discovery, and expert witness strategies in reliance on these deadlines.

50. Transferring this case to the Western District of Texas, Austin Division, would disrupt the established schedule, require the parties to start the case management process anew before a different judge, and cause unnecessary delay in the resolution of this action. Given the rapidly evolving nature of the silicon-photonics transceiver market and the ongoing commercial harm that OWS is suffering as a result of Lumicore's infringement, delay is particularly prejudicial to OWS.

51. The parties have already engaged in significant activity in this district. In addition to the filing of the Complaint and the issuance of the Scheduling Order, the following events have occurred in this forum: Lumicore filed its Answer and Counterclaims (D.E. 9); Lumicore filed its Motion to Transfer Venue (D.E. 13); the parties participated in a Rule 26(f) conference and submitted a Joint discovery/Case Management Plan (D.E. 18); and the parties have begun exchanging initial disclosures and negotiating the terms of a protective order. These proceedings represent a significant investment of judicial and party resources in this district.

52. OWS has retained local counsel in Tyler — Whitmore & Callahan LLP — specifically for this case and has relied on the Eastern District's procedural framework in planning its litigation strategy. OWS's lead litigation counsel at Calderwood & Harkness LLP has coordinated closely with Mr. Callahan and his team in Tyler on all aspects of case management, and OWS has incurred substantial costs in preparing to litigate in this forum.

53. Transfer would impose unnecessary burden and cost on OWS and its witnesses, many of whom are already prepared to participate in proceedings in this district. While Austin and Tyler are both located in Texas, the practical burdens of transfer are not insignificant: OWS would need to retain new or additional local counsel in the Western District, re-file certain pleadings or motions, and adjust its litigation timeline to accommodate the receiving court's docket and procedures. These burdens are particularly unjustified given Lumicore's own physical presence and commercial activity in the Eastern District.

IX. LUMICORE'S SALES REVENUE FROM ACCUSED PRODUCTS

54. Based on publicly available financial disclosures and analyst reports, Lumicore's accused product lines generated substantial revenue in fiscal year 2023, including revenues derived from sales to customers with facilities in the Eastern District of Texas:

a. LumiLink 400G-ZR+: Fiscal year 2023 revenue of approximately $94.8 million. This product was launched in the third quarter of 2022 and has been sold to numerous customers across the United States, including customers with facilities in the Eastern District of Texas.

b. LumiLink 800G-DR8: Fiscal year 2023 revenue of approximately $128.4 million. This product was launched in the first quarter of 2023 and has rapidly gained market share in the data-center interconnect market, including in the Eastern District of Texas.

c. LumiEdge 1600G-LR: Fiscal year 2023 revenue of approximately $41.7 million. This product was launched in the fourth quarter of 2023, and despite being on the market for only a portion of the fiscal year, it has generated significant revenue, reflecting strong customer demand.

d. Total accused-product revenue (FY 2023): Approximately $264.9 million.

55. A meaningful portion of these revenues derives from sales to customers with facilities and operations in the Eastern District of Texas, including the customers identified above — Pinnacle Data Systems, Frontier Cloud Services, and CrossPoint Networking.

56. Lumicore is a publicly traded company listed on the Nasdaq Stock Market. Lumicore completed its initial public offering in March 2022 at a price of $24.00 per share. As of the date of the filing of the Complaint in this action (April 22, 2024), Lumicore's stock was trading at approximately $37.00 per share, reflecting a market capitalization of approximately $3.4 billion based on approximately 91.8 million shares outstanding. Lumicore is headquartered in Texas, maintains offices in both the Western and Eastern Districts of Texas, employs personnel in both districts, and generates hundreds of millions of dollars in revenue from the accused products. Under these circumstances, Lumicore cannot credibly claim that litigating in the Eastern District of Texas — a district in which it maintains a physical office, employs sales and technical personnel, sells accused products, and serves customers — imposes an unreasonable or disproportionate burden.

X. CONCLUSION

57. For the foregoing reasons, venue in the Eastern District of Texas is both proper and convenient. The facts set forth in this declaration demonstrate that substantial connections exist between this litigation and the Eastern District:

a. Lumicore maintains a physical sales and technical support office in Tyler, Texas, which is located within the Eastern District of Texas, and from which Lumicore actively sells and supports the accused products.

b. Lumicore has sold substantial quantities of accused products — the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR transceiver modules — to at least three customers with facilities and operations in the Eastern District.

c. Lumicore employs personnel in the Eastern District who have relevant knowledge regarding the sale, marketing, and support of the accused products.

d. OWS's local counsel, Whitmore & Callahan LLP, is based in Tyler, and customer witnesses are located in or near the district.

e. OWS and Lumicore compete head-to-head for the same customer accounts in the Eastern District, making this district directly relevant to OWS's lost-profits damages analysis.

f. Third-party witnesses located in the Eastern District can be compelled to attend trial in this district.

g. The Court has already issued a Scheduling Order, and the parties have invested significant resources in litigating in this forum.

58. Transfer to the Western District of Texas would not serve the convenience of the parties or witnesses and would not be in the interest of justice. To the contrary, transfer would disrupt the established case schedule, impose unnecessary costs and burdens on OWS and its witnesses, and provide no meaningful convenience advantage to Lumicore, which itself maintains an office and employees in the Eastern District.

59. OWS respectfully requests that the Court deny Lumicore's Motion to Transfer Venue (D.E. 13) in its entirety.

ATTESTATION

I declare under penalty of perjury under the laws of the United States of America that the foregoing is true and correct.

Executed on July 8, 2024, at Santa Clara, California.

________________________________________

Rebecca Tanaka General Counsel Optiwave Semiconductor Corp. 4810 Bayside Technology Parkway, Suite 300 Santa Clara, CA 95054

CERTIFICATE OF SERVICE

I hereby certify that a true and correct copy of the foregoing Declaration of Rebecca Tanaka in Support of Plaintiff's Opposition to Defendant's Motion to Transfer Venue, together with all exhibits attached thereto, was served on all counsel of record on July 8, 2024, via the Court's CM/ECF electronic filing system, which will send notification of such filing to the following:

Counsel for Defendant Lumicore Technologies, Inc.:

Catherine "Kate" Rourke Darren Cho Samantha Briggs Rohan Iyer Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, TX 78701

Maria Garza Trask Eddington LLP 425 East Front Street, Suite 300 Tyler, TX 75701

________________________________________

James R. Callahan WHITMORE & CALLAHAN LLP 110 North College Avenue, Suite 800 Tyler, TX 75702 Telephone: (903) 555-2180 Facsimile: (903) 555-2181

Email: jcallahan@whitmorecallahan.com

Local Counsel for Plaintiff Optiwave Semiconductor Corp.

LIST OF EXHIBITS

The following exhibits are attached to or filed concurrently with this Declaration:

See also Declaration of James Callahan in Support of Plaintiff's Opposition to Defendant's Motion to Transfer Venue, filed concurrently herewith (D.E. 22), which separately attests to Lumicore's commercial presence and activity in Tyler, Texas, and the Eastern District of Texas.

Exhibit No.	Description
Exhibit 1	Map and address confirmation of Lumicore Technologies, Inc.'s Tyler, TX office at 2700 Earl Campbell Parkway, Suite 150, Tyler, TX 75701
Exhibit 2	Publicly available information and records confirming sales of accused products to Pinnacle Data Systems, LLC (Longview, TX), Frontier Cloud Services, Inc. (Marshall, TX), and CrossPoint Networking Corp. (Plano, TX)
Exhibit 3	FairPoint Licensing Group, LLC's January 15, 2023 licensing letter to Raymond Bautista, General Counsel of Lumicore Technologies, Inc. (filed subject to protective order)
Exhibit 4	FairPoint Licensing Group, LLC's May 15, 2023 supplemental licensing letter to Raymond Bautista, General Counsel of Lumicore Technologies, Inc. (filed subject to protective order)

UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
OPTIWAVE SEMICONDUCTOR CORP.,
Plaintiff,
v.
LUMICORE TECHNOLOGIES, INC.,
Defendant.
Case No. 2:24-cv-00319-JRG
Judge James R. Gilstrap
DECLARATION OF REBECCA TANAKA IN SUPPORT OF PLAINTIFF'S OPPOSITION TO DEFENDANT'S MOTION TO TRANSFER VENUE
Filed: July 8, 2024
I. INTRODUCTION AND DECLARANT IDENTIFICATION
1. I, Rebecca Tanaka, declare under penalty of perjury pursuant to 28 U.S.C. § 1746 as follows:
2. My full name is Rebecca Tanaka. I am the General Counsel of Optiwave Semiconductor Corp. ("OWS" or "Optiwave Semi"). I have been employed by OWS since March 2017 — a period of over seven years — and am responsible for overseeing all legal affairs of the company, including intellectual property portfolio management and licensing, litigation, corporate governance, regulatory compliance, and commercial contracting. Prior to joining OWS, I served as Associate General Counsel at Visteon Photonics, Inc. and as an associate at Brennan & Ashford LLP, where I practiced patent litigation and IP transactional law for approximately six years.
3. OWS is a corporation organized and existing under the laws of the State of Delaware, with its principal place of business and corporate headquarters located at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054. OWS is a fabless semiconductor company specializing in the design, development, and sale of silicon photonics chipsets and transceiver modules for data-center interconnect applications. OWS does not operate its own fabrication facilities but instead contracts with leading semiconductor foundries for the manufacture of its proprietary photonic integrated circuits.
4. OWS is the third-largest U.S. supplier of silicon-photonics transceiver modules for hyperscale data centers, serving many of the world's largest cloud services providers and enterprise data-center operators. For the fiscal year ended December 31, 2023, OWS reported total revenue of $487.3 million and net income of $61.4 million, as reflected in the company's audited financial statements prepared and certified by Gresham & Whitfield LLP, the company's independent registered public accounting firm.
5. OWS holds a robust intellectual property portfolio consisting of 142 issued U.S. utility patents and 58 pending U.S. patent applications, covering technologies related to silicon photonics waveguide structures, coherent optical transceiver architectures, thermal management solutions for photonic integrated circuits, polarization-diverse grating couplers, and related semiconductor fabrication methods. OWS's key product families include the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver modules, which compete directly in the market segments served by the accused products in this litigation.
6. The majority owner of OWS is Ridgeline Capital Partners, LP, a private equity firm that acquired a 55% ownership stake in OWS in 2019. Franklin Osei, a Managing Director of Ridgeline Capital Partners, serves as Chair of the OWS Board of Directors as Ridgeline's designee. The remaining equity is held by OWS's founders, current and former employees, and other institutional investors.
7. I have personal knowledge of the facts stated in this declaration. My knowledge is based on my role as General Counsel of OWS, my direct involvement in pre-suit licensing negotiations with Defendant Lumicore Technologies, Inc. ("Lumicore"), my oversight of OWS's commercial relationships with customers in the Eastern District of Texas and elsewhere, my review of OWS's business records maintained in the ordinary course of business, and my coordination with OWS's outside litigation counsel in connection with this action. Where I refer to information derived from business records, those records were made at or near the time of the events they describe, by or from information transmitted by persons with knowledge of those events, and are kept in the course of regularly conducted business activity.
II. PURPOSE OF DECLARATION
8. I submit this declaration in support of Plaintiff Optiwave Semiconductor Corp.'s Opposition to Defendant Lumicore Technologies, Inc.'s Motion to Transfer Venue (D.E. 13), filed June 24, 2024, in which Lumicore seeks to transfer this action from the Eastern District of Texas, marshall Division, to the Western District of Texas, Austin Division.
9. The purpose of this declaration is to set forth facts within my knowledge that are relevant to the Court's analysis of the transfer factors under 28 U.S.C. § 1404(a). Specifically, this declaration addresses: (a) Lumicore's commercial presence and sales activity in the Eastern District of Texas, including its physical office in Tyler, Texas, and its sales of accused products to customers with facilities in this district; (b) OWS's own customer relationships and business contacts within the Eastern District of Texas; (c) the location of relevant party, non-party, and third-party witnesses and documents; and (d) the convenience factors supporting retention of venue in this district.
III. BACKGROUND ON THE ASSERTED PATENTS AND THIS LITIGATION
10. On April 22, 2024, OWS filed this patent infringement action against Lumicore Technologies, Inc. ("Lumicore"), Case No. 2:24-cv-00319-JRG, in the United States District Court for the Eastern District of Texas, marshall Division. The Complaint asserts infringement of four U.S. utility patents owned by OWS, which are described in detail below.
11. The first asserted patent is U.S. Patent No. 10,234,847 (the "'847 Patent"), entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss." The '847 Patent was filed on September 14, 2016, and issued on March 19, 2019. The '847 Patent is directed to novel waveguide multiplexer structures that achieve significantly reduced insertion loss across multiple wavelength channels in silicon photonic circuits, enabling higher bandwidth and improved signal integrity in data-center interconnect applications. OWS is the original assignee of the '847 Patent.
12. The second asserted patent is U.S. Patent No. 10,891,193 (the "'193 Patent"), entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate." The '193 Patent was filed on April 7, 2017, and issued on January 12, 2021. The '193 Patent covers integrated coherent optical transceiver architectures fabricated on a silicon substrate, incorporating novel modulator and receiver designs that enable high-bandwidth data transmission over metropolitan and long-haul fiber-optic links. OWS is the original assignee of the '193 Patent.
13. The third asserted patent is U.S. Patent No. 9,678,562 (the "'562 Patent"), entitled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks." The '562 Patent was filed on November 22, 2014, and issued on June 13, 2017. The '562 Patent was originally assigned to Solara Optics, Inc. OWS acquired all right, title, and interest in the '562 Patent from Solara Optics pursuant to an Asset Purchase Agreement dated June 15, 2018. The '562 Patent claims methods for embedding micro-channel heat sink structures within photonic integrated circuits to manage thermal dissipation — a critical challenge in high-density silicon photonics modules operating at data rates of 400 Gbps and above.
14. The fourth asserted patent is U.S. Patent No. 11,402,015 (the "'015 Patent"), entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers." The '015 Patent was filed on August 30, 2019, and issued on August 2, 2022. The '015 Patent is directed to polarization-diverse grating coupler designs that improve coupling efficiency between optical fibers and silicon photonic waveguides, reducing polarization-dependent loss and enhancing the performance of transceiver modules across a range of operating conditions. OWS is the original assignee of the '015 Patent.
15. The accused products in this action are Lumicore's LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR transceiver modules, each of which OWS alleges infringes one or more claims of the asserted patents. These products are silicon-photonics-based transceiver modules that compete directly with OWS's own product families in the hyperscale data-center interconnect market.
16. OWS seeks compensatory damages of approximately $210 million for Lumicore's past and ongoing infringement of the asserted patents, together with enhanced damages for willful infringement, pre-judgment and post-judgment interest, and a permanent injunction prohibiting Lumicore from further infringement.
IV. LUMICORE'S PRESENCE IN THE EASTERN DISTRICT OF TEXAS
A. Lumicore's Tyler, Texas Office
17. Lumicore Technologies, Inc. is a corporation organized and existing under the laws of the State of Delaware. Lumicore's corporate headquarters is located at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759, which is situated within the Western District of Texas.
18. However, in addition to its Austin headquarters, Lumicore maintains a sales office and technical support center at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701. Tyler is located in Smith County, within the Eastern District of Texas, Tyler Division. A true and correct copy of publicly available information confirming the existence and address of this office is attached hereto as Exhibit 1.
19. Based on OWS's investigation and my review of publicly available information — including Lumicore's own website, publicly available Westmark Health IT profiles of Lumicore employees, press releases, and industry directory listings — the Tyler office is staffed by Lumicore employees who engage in sales, customer outreach, post-sale technical support, and relationship management for customers located in the Eastern District of Texas and the surrounding region. The Tyler office serves as a regional hub from which Lumicore's sales and technical personnel interact with data-center operators and networking companies operating facilities in East Texas and the Dallas-Fort Worth metropolitan area.
20. The Tyler office is not a mere mailing address, registered-agent location, or nominal presence of the kind that some defendants have used to manufacture or disclaim venue ties. Rather, it is a functioning commercial facility from which Lumicore actively conducts business on a regular and ongoing basis, including the sale, promotion, and technical support of the very products accused of infringement in this litigation — the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR transceiver modules. I understand, based on OWS's competitive intelligence gathering, that the Tyler office has been operational since at least mid-2022 and that Lumicore has made capital investments in equipping that office with demonstration equipment, laboratory space for product evaluation, and dedicated support infrastructure.
B. Lumicore's Sales of Accused Products in the Eastern District
21. Through my role as General Counsel and my review of OWS's competitive intelligence reports, publicly available procurement records, and information obtained from OWS's own customers and sales team, I am aware that Lumicore has sold substantial quantities of accused products to customers with operations and facilities located within the Eastern District of Texas.
22. Specifically, Lumicore has sold accused products to at least three customers with significant operations in this district:
a. Pinnacle Data Systems, LLC — Pinnacle Data Systems is a data-center operator that maintains colocation and enterprise data-center facilities at 1800 Judson Road, Longview, Texas 75601. Longview is located in Gregg County, within the Eastern District of Texas. Pinnacle Data Systems is a significant purchaser of silicon-photonics transceiver modules for its data-center interconnect infrastructure, and OWS's competitive intelligence indicates that Pinnacle has purchased Lumicore's LumiLink 400G-ZR+ and LumiLink 800G-DR8 modules for deployment at its Longview facility.
b. Frontier Cloud Services, Inc. — Frontier Cloud Services is a regional cloud services provider that operates data-center facilities at 400 East Houston Street, marshall, Texas 75670. Marshall is located in Harrison County and is the seat of the marshall Division of the Eastern District of Texas — the very division in which this case is pending. Frontier Cloud Services has purchased Lumicore's accused transceiver products for use in its marshall data-center operations.
c. CrossPoint Networking Corp. — CrossPoint Networking is a networking company with facilities at 7500 Dallas Parkway, Suite 200, Plano, Texas 75024. While Plano is located in Collin County, CrossPoint's operations extend into the Eastern District of Texas, and the company maintains network infrastructure and customer-facing operations within the district. CrossPoint is a purchaser of Lumicore's LumiLink 800G-DR8 and LumiEdge 1600G-LR modules.
23. These are not isolated, de minimis, or incidental sales. Each of these customers is a significant purchaser of silicon-photonics transceiver modules — the very product category at issue in this litigation. The accused products — LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR modules — have been deployed and are currently in use at data-center facilities operated by these customers within the Eastern District of Texas. Publicly available records and other information confirming sales of accused products to these customers are attached hereto as Exhibit 2.
24. The presence of accused products at customer facilities within this district is not merely relevant to the question of personal jurisdiction or venue propriety; it is also directly relevant to the merits of OWS's infringement claims, as it establishes that acts of use and sale of the accused products have occurred within the Eastern District of Texas.
V. OWS'S CUSTOMER RELATIONSHIPS AND BUSINESS CONTACTS IN THE EASTERN DISTRICT
25. OWS also maintains significant business contacts with customers in the Eastern District of Texas. OWS sells its competing transceiver products — including the OWS-400ZR and OWS-800XR transceiver modules — to data-center operators and cloud services providers that maintain facilities within this district. OWS's sales team regularly interacts with customers in East Texas, and OWS's products are deployed at data-center facilities located within the district's boundaries.
26. OWS and Lumicore compete head-to-head for the same customer accounts in the Eastern District of Texas. Through my review of OWS's internal sales reports and competitive intelligence, I have direct evidence that Lumicore's accused products have displaced OWS's products at customer locations within the Eastern District. In multiple instances, OWS has lost sales to Lumicore at data-center facilities where OWS's transceiver modules were previously the primary or sole silicon-photonics interconnect solution.
27. This competitive overlap in the Eastern District of Texas is directly relevant to OWS's lost-profits damages theory. OWS's damages expert has prepared a preliminary analysis based on a 38.2% market-share displacement model, which quantifies the lost profits attributable to Lumicore's infringement by reference to the sales that OWS would have made but for the availability of the infringing products. The fact that both OWS and Lumicore serve overlapping customer bases within the Eastern District of Texas makes this district a particularly appropriate forum for the resolution of damages issues.
28. Additionally, potential fact witnesses employed by OWS's and Lumicore's Eastern District customers may have knowledge of purchasing decisions, the role of patented features in product selection and evaluation, competitive pricing dynamics, product performance and reliability, and the impact of the accused products on OWS's market position — all of which are relevant to infringement, damages, and injunctive relief in this case.
VI. PRE-SUIT LICENSING CONTACTS AND KNOWLEDGE OF INFRINGEMENT
29. As General Counsel of OWS, I was directly and personally involved in the pre-suit licensing efforts directed at Lumicore. The timeline of those efforts is set forth below and is relevant to the willfulness of Lumicore's infringement and to the question of whether this litigation was precipitated by genuine and exhaustive efforts to resolve the dispute without the need for court intervention.
30. In October 2022, OWS's internal engineering team — led by Dr. David Naranjo, Vice President of Engineering — identified potential infringement of OWS's patents by Lumicore's LumiLink 400G-ZR+ transceiver module, which Lumicore had launched commercially in the third quarter of 2022. The engineering team's initial assessment was based on a review of publicly available product specifications, datasheets, and marketing materials published by Lumicore, which suggested that the LumiLink 400G-ZR+ incorporated waveguide multiplexer structures and thermal management architectures that fell within the scope of OWS's patent claims.
31. In November 2022, at my direction, OWS retained Benchmark Semiconductor Analysis, LLC ("Benchmark"), an independent semiconductor analysis firm located at 2244 Mission College Boulevard, Santa Clara, California 95054, to perform a comprehensive teardown and reverse-engineering analysis of the LumiLink 400G-ZR+ module. Benchmark's scope of work included optical and electron microscopy of the photonic integrated circuit die, cross-sectional analysis of waveguide and thermal management structures, functional testing, and comparison of the observed structures and processes against the claims of the '847, '193, and '562 Patents.
32. On December 12, 2022, Benchmark delivered its teardown report to OWS. The report confirmed the presence of accused multi-channel waveguide multiplexer structures and embedded micro-channel thermal management features in the LumiLink 400G-ZR+ module that correspond to specific claim elements of the '847 Patent and the '562 Patent. The report also identified coherent transceiver architecture elements consistent with the claims of the '193 Patent. Based on this report and the analysis of OWS's internal engineering team, I concluded that there was a substantial basis for OWS to assert its patent rights against Lumicore.
33. OWS then engaged FairPoint Licensing Group, LLC ("FairPoint"), a patent licensing advisory firm located at 500 Sansome Street, Suite 1400, San Francisco, California 94111, to conduct licensing outreach to Lumicore. FairPoint's Managing Director, Angela Reeves, led the engagement. FairPoint was retained to present OWS's licensing position to Lumicore in a professional manner and to negotiate, if possible, a reasonable royalty license that would avoid the need for litigation.
34. On January 15, 2023, FairPoint, acting on behalf of OWS, sent a detailed licensing and notice letter to Lumicore's General Counsel, Raymond Bautista, at Lumicore's Austin headquarters. The letter identified the '847 Patent, the '193 Patent, and the '562 Patent; described OWS's belief that Lumicore's LumiLink 400G-ZR+ product infringed claims of each patent; and invited Lumicore to enter into licensing discussions. A true and correct copy of FairPoint's January 15, 2023 licensing letter is attached hereto as Exhibit 3, subject to any protective order entered by the Court.
35. On February 28, 2023, Lumicore responded to FairPoint's licensing letter through its outside counsel, Hawthorne Vega & Cruz LLP, specifically through partner Catherine "Kate" Rourke of that firm. In its response, Lumicore disputed OWS's infringement allegations and questioned the validity of the identified patents. Lumicore did not provide any detailed technical analysis to support its non-infringement or invalidity positions, nor did it propose any alternative licensing terms or counteroffer.
36. On April 20, 2023, I personally attended an in-person licensing meeting at Lumicore's offices in Austin, Texas. The meeting was attended by Angela Reeves of FairPoint on behalf of OWS, Raymond Bautista in his capacity as General Counsel of Lumicore, and Kate Rourke of Hawthorne Vega & Cruz LLP as Lumicore's outside counsel. At the meeting, OWS presented a detailed claim-chart analysis mapping the claims of the '847, '193, and '562 Patents to the structures and methods identified in the Benchmark teardown report. Lumicore's representatives reiterated their general position that the LumiLink 400G-ZR+ did not infringe and that the asserted patents were of questionable validity, but did not provide any specific technical basis for those contentions. The meeting did not result in a resolution or any agreement to continue negotiations.
37. On May 15, 2023, FairPoint sent a second, supplemental licensing letter to Raymond Bautista, this time adding the '015 Patent — which had issued on August 2, 2022 — and expanding the scope of accused products to include the LumiLink 800G-DR8 module, which Lumicore had launched in the first quarter of 2023. The supplemental letter provided additional claim-chart analysis for the '015 Patent and the newly accused product. A true and correct copy of FairPoint's May 15, 2023 supplemental licensing letter is attached hereto as Exhibit 4, subject to any protective order entered by the Court.
38. On July 10, 2023, Lumicore, again through Kate Rourke of Hawthorne Vega & Cruz LLP, declined to take a license. Lumicore's response stated that it had obtained "competent legal opinions" that its products do not infringe any valid claim of the identified patents, and that Lumicore considered the matter closed. Lumicore did not share copies of any such opinions with OWS or FairPoint.
39. Despite having received detailed notice of OWS's patents and infringement allegations — including claim charts, a teardown analysis, and a face-to-face licensing meeting — Lumicore launched its next-generation LumiEdge 1600G-LR transceiver module in the fourth quarter of 2023. OWS's engineering team promptly analyzed the LumiEdge 1600G-LR and identified it as also infringing claims of the '193 Patent and the '015 Patent. Lumicore's decision to launch the LumiEdge 1600G-LR after receiving extensive notice of OWS's patent rights underscores the willfulness of Lumicore's infringement.
40. Following the failure of the licensing discussions and the launch of the LumiEdge 1600G-LR, OWS determined that litigation was necessary to protect its patent rights. On March 18, 2024, OWS formally engaged Calderwood & Harkness LLP as lead litigation counsel for this action. The Complaint was filed on April 22, 2024.
VII. LOCATION OF WITNESSES AND EVIDENCE
A. Plaintiff's Witnesses and Counsel in or Near the Eastern District
41. OWS's local counsel in this matter, Whitmore & Callahan LLP, is based at 110 North College Avenue, Suite 800, Tyler, Texas 75702 — within the Eastern District of Texas. The lead local counsel attorney for OWS is James "Jim" Callahan, a named partner at Whitmore & Callahan LLP. Mr. Callahan is admitted to practice in the Eastern District of Texas and has extensive experience litigating patent cases before Judge Gilstrap and the other judges of this Court. OWS retained Mr. Callahan specifically for this case based on his familiarity with the procedures and practices of this district.
42. Additionally, customer witnesses employed by Pinnacle Data Systems (Longview, Texas), Frontier Cloud Services (Marshall, Texas), and CrossPoint Networking (Plano, Texas) are located in or near the Eastern District of Texas and would find it convenient to attend hearings, depositions, and trial proceedings in this district. These witnesses are expected to have knowledge relevant to the infringement, damages, and injunction issues in this case, including the selection, procurement, deployment, and performance of both the accused Lumicore products and OWS's competing products at data-center facilities within the district.
B. Defendant's Witnesses
43. While Lumicore's corporate headquarters is located in Austin, Texas, within the Western District, Lumicore also has employees and potential witnesses located at its Tyler, Texas sales and technical support office at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701, which is within the Eastern District of Texas. These employees are likely to have relevant knowledge regarding the sale, marketing, promotion, pricing, and technical support of the accused products to customers located in the Eastern District.
44. Several of Lumicore's customer-facing employees based in Tyler — including sales account managers, field application engineers, and technical support specialists — have regular, ongoing interactions with the Eastern District customers identified above (Pinnacle Data Systems, Frontier Cloud Services, and CrossPoint Networking). These employees may have relevant testimony regarding customer communications, product demonstrations, competitive bidding processes, pricing negotiations, and post-sale support activities that bear on infringement, damages, and willfulness.
45. Furthermore, Lumicore's own local counsel in this matter, Trask Eddington LLP, is located at 425 East Front Street, Suite 300, Tyler, Texas 75701 — within the Eastern District of Texas. Lumicore's lead local counsel attorney is Maria Garza of that firm. The fact that Lumicore itself has retained local counsel in Tyler further demonstrates the practical convenience and suitability of this forum for the litigation.
C. Third-Party Witnesses
46. Employees of Pinnacle Data Systems, Frontier Cloud Services, and CrossPoint Networking who were involved in purchasing decisions for the accused products are potential third-party witnesses in this action. These individuals are located in the Eastern District of Texas and can be compelled to attend trial in this district pursuant to Federal Rule of Civil Procedure 45. Their testimony may address the role of specific patented features — including waveguide multiplexer performance, thermal management capabilities, and polarization-diverse coupling efficiency — in the product selection and procurement process, which is relevant to both infringement and damages.
47. Additionally, I am informed that former Lumicore engineer Melissa Chen, who is now employed at Veridian Photonics, Inc., may have relevant testimony regarding Lumicore's awareness of OWS's patents during the design phase of the LumiLink 400G-ZR+ transceiver module. Ms. Chen's testimony could be relevant to the issues of willfulness and the design-around efforts (or lack thereof) undertaken by Lumicore during the development of the accused products. I understand that Ms. Chen is currently located in the Dallas-Fort Worth metropolitan area, in closer proximity to the Eastern District of Texas than to Austin.
VIII. CONVENIENCE AND JUDICIAL ECONOMY
48. The Eastern District of Texas has well-established patent docket management procedures that promote the efficient resolution of patent disputes. The Court maintains an effective Markman hearing process, utilizes experienced judicial staff and technical advisors, and has a demonstrated track record of bringing patent cases to trial in a timely manner. These procedural advantages are significant and should weigh against disrupting the current forum.
49. Judge James R. Gilstrap has already issued the Scheduling Order in this case (D.E. 27, entered August 12, 2024), which sets the Markman hearing for March 14, 2025, and trial for February 2, 2026. The parties have been operating under this schedule and have begun planning their respective claim construction, discovery, and expert witness strategies in reliance on these deadlines.
50. Transferring this case to the Western District of Texas, Austin Division, would disrupt the established schedule, require the parties to start the case management process anew before a different judge, and cause unnecessary delay in the resolution of this action. Given the rapidly evolving nature of the silicon-photonics transceiver market and the ongoing commercial harm that OWS is suffering as a result of Lumicore's infringement, delay is particularly prejudicial to OWS.
51. The parties have already engaged in significant activity in this district. In addition to the filing of the Complaint and the issuance of the Scheduling Order, the following events have occurred in this forum: Lumicore filed its Answer and Counterclaims (D.E. 9); Lumicore filed its Motion to Transfer Venue (D.E. 13); the parties participated in a Rule 26(f) conference and submitted a Joint discovery/Case Management Plan (D.E. 18); and the parties have begun exchanging initial disclosures and negotiating the terms of a protective order. These proceedings represent a significant investment of judicial and party resources in this district.
52. OWS has retained local counsel in Tyler — Whitmore & Callahan LLP — specifically for this case and has relied on the Eastern District's procedural framework in planning its litigation strategy. OWS's lead litigation counsel at Calderwood & Harkness LLP has coordinated closely with Mr. Callahan and his team in Tyler on all aspects of case management, and OWS has incurred substantial costs in preparing to litigate in this forum.
53. Transfer would impose unnecessary burden and cost on OWS and its witnesses, many of whom are already prepared to participate in proceedings in this district. While Austin and Tyler are both located in Texas, the practical burdens of transfer are not insignificant: OWS would need to retain new or additional local counsel in the Western District, re-file certain pleadings or motions, and adjust its litigation timeline to accommodate the receiving court's docket and procedures. These burdens are particularly unjustified given Lumicore's own physical presence and commercial activity in the Eastern District.
IX. LUMICORE'S SALES REVENUE FROM ACCUSED PRODUCTS
54. Based on publicly available financial disclosures and analyst reports, Lumicore's accused product lines generated substantial revenue in fiscal year 2023, including revenues derived from sales to customers with facilities in the Eastern District of Texas:
a. LumiLink 400G-ZR+: Fiscal year 2023 revenue of approximately $94.8 million. This product was launched in the third quarter of 2022 and has been sold to numerous customers across the United States, including customers with facilities in the Eastern District of Texas.
b. LumiLink 800G-DR8: Fiscal year 2023 revenue of approximately $128.4 million. This product was launched in the first quarter of 2023 and has rapidly gained market share in the data-center interconnect market, including in the Eastern District of Texas.
c. LumiEdge 1600G-LR: Fiscal year 2023 revenue of approximately $41.7 million. This product was launched in the fourth quarter of 2023, and despite being on the market for only a portion of the fiscal year, it has generated significant revenue, reflecting strong customer demand.
d. Total accused-product revenue (FY 2023): Approximately $264.9 million.
55. A meaningful portion of these revenues derives from sales to customers with facilities and operations in the Eastern District of Texas, including the customers identified above — Pinnacle Data Systems, Frontier Cloud Services, and CrossPoint Networking.
56. Lumicore is a publicly traded company listed on the Nasdaq Stock Market. Lumicore completed its initial public offering in March 2022 at a price of $24.00 per share. As of the date of the filing of the Complaint in this action (April 22, 2024), Lumicore's stock was trading at approximately $37.00 per share, reflecting a market capitalization of approximately $3.4 billion based on approximately 91.8 million shares outstanding. Lumicore is headquartered in Texas, maintains offices in both the Western and Eastern Districts of Texas, employs personnel in both districts, and generates hundreds of millions of dollars in revenue from the accused products. Under these circumstances, Lumicore cannot credibly claim that litigating in the Eastern District of Texas — a district in which it maintains a physical office, employs sales and technical personnel, sells accused products, and serves customers — imposes an unreasonable or disproportionate burden.
X. CONCLUSION
57. For the foregoing reasons, venue in the Eastern District of Texas is both proper and convenient. The facts set forth in this declaration demonstrate that substantial connections exist between this litigation and the Eastern District:
a. Lumicore maintains a physical sales and technical support office in Tyler, Texas, which is located within the Eastern District of Texas, and from which Lumicore actively sells and supports the accused products.
b. Lumicore has sold substantial quantities of accused products — the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR transceiver modules — to at least three customers with facilities and operations in the Eastern District.
c. Lumicore employs personnel in the Eastern District who have relevant knowledge regarding the sale, marketing, and support of the accused products.
d. OWS's local counsel, Whitmore & Callahan LLP, is based in Tyler, and customer witnesses are located in or near the district.
e. OWS and Lumicore compete head-to-head for the same customer accounts in the Eastern District, making this district directly relevant to OWS's lost-profits damages analysis.
f. Third-party witnesses located in the Eastern District can be compelled to attend trial in this district.
g. The Court has already issued a Scheduling Order, and the parties have invested significant resources in litigating in this forum.
58. Transfer to the Western District of Texas would not serve the convenience of the parties or witnesses and would not be in the interest of justice. To the contrary, transfer would disrupt the established case schedule, impose unnecessary costs and burdens on OWS and its witnesses, and provide no meaningful convenience advantage to Lumicore, which itself maintains an office and employees in the Eastern District.
59. OWS respectfully requests that the Court deny Lumicore's Motion to Transfer Venue (D.E. 13) in its entirety.
ATTESTATION
I declare under penalty of perjury under the laws of the United States of America that the foregoing is true and correct.
Executed on July 8, 2024, at Santa Clara, California.
________________________________________
Rebecca Tanaka General Counsel Optiwave Semiconductor Corp. 4810 Bayside Technology Parkway, Suite 300 Santa Clara, CA 95054
CERTIFICATE OF SERVICE
I hereby certify that a true and correct copy of the foregoing Declaration of Rebecca Tanaka in Support of Plaintiff's Opposition to Defendant's Motion to Transfer Venue, together with all exhibits attached thereto, was served on all counsel of record on July 8, 2024, via the Court's CM/ECF electronic filing system, which will send notification of such filing to the following:
Counsel for Defendant Lumicore Technologies, Inc.:
Catherine "Kate" Rourke Darren Cho Samantha Briggs Rohan Iyer Hawthorne Vega & Cruz LLP 600 Congress Avenue, Suite 2400 Austin, TX 78701
Maria Garza Trask Eddington LLP 425 East Front Street, Suite 300 Tyler, TX 75701
________________________________________
James R. Callahan WHITMORE & CALLAHAN LLP 110 North College Avenue, Suite 800 Tyler, TX 75702 Telephone: (903) 555-2180 Facsimile: (903) 555-2181
Email: jcallahan@whitmorecallahan.com
Local Counsel for Plaintiff Optiwave Semiconductor Corp.
LIST OF EXHIBITS
The following exhibits are attached to or filed concurrently with this Declaration:
See also Declaration of James Callahan in Support of Plaintiff's Opposition to Defendant's Motion to Transfer Venue, filed concurrently herewith (D.E. 22), which separately attests to Lumicore's commercial presence and activity in Tyler, Texas, and the Eastern District of Texas.
Exhibit No. | Description
Exhibit 1 | Map and address confirmation of Lumicore Technologies, Inc.'s Tyler, TX office at 2700 Earl Campbell Parkway, Suite 150, Tyler, TX 75701
Exhibit 2 | Publicly available information and records confirming sales of accused products to Pinnacle Data Systems, LLC (Longview, TX), Frontier Cloud Services, Inc. (Marshall, TX), and CrossPoint Networking Corp. (Plano, TX)
Exhibit 3 | FairPoint Licensing Group, LLC's January 15, 2023 licensing letter to Raymond Bautista, General Counsel of Lumicore Technologies, Inc. (filed subject to protective order)
Exhibit 4 | FairPoint Licensing Group, LLC's May 15, 2023 supplemental licensing letter to Raymond Bautista, General Counsel of Lumicore Technologies, Inc. (filed subject to protective order)