UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S MOTIONS IN LIMINE
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TABLE OF CONTENTS
INTRODUCTION ..................................................................................................................... 1
MOTION IN LIMINE NO. 1: To Exclude Evidence of OWS's Private Equity Sponsor Involvement and Litigation Funding ..................................................................................................................... 4
A. Background and Factual Context ..................................................................................................................... 4
B. Legal Argument ..................................................................................................................... 7
C. Requested Relief ..................................................................................................................... 10
MOTION IN LIMINE NO. 2: To Exclude Patent-Troll or Non-Practicing Entity Characterizations ..................................................................................................................... 11
A. Background and Factual Context ..................................................................................................................... 11
B. Legal Argument ..................................................................................................................... 14
C. Requested Relief ..................................................................................................................... 17
MOTION IN LIMINE NO. 3: To Exclude Lumicore's Undisclosed Opinion-of-Counsel Letters ..................................................................................................................... 18
A. Background and Factual Context ..................................................................................................................... 18
B. Legal Argument ..................................................................................................................... 22
C. Requested Relief ..................................................................................................................... 26
MOTION IN LIMINE NO. 4: To Exclude Prior-Art References Not Disclosed in Lumicore's Invalidity Contentions ..................................................................................................................... 27
A. Background and Factual Context ..................................................................................................................... 27
B. Legal Argument ..................................................................................................................... 29
C. Requested Relief ..................................................................................................................... 32
MOTION IN LIMINE NO. 5: To Exclude Testimony from Dr. Rajesh Sundaram on Damages Topics Outside His Designated Scope ..................................................................................................................... 33
A. Background and Factual Context ..................................................................................................................... 33
B. Legal Argument ..................................................................................................................... 36
C. Requested Relief ..................................................................................................................... 39
MOTION IN LIMINE NO. 6: To Exclude Reference to Other Pending OWS Patent Litigations ..................................................................................................................... 40
A. Background and Factual Context ..................................................................................................................... 40
B. Legal Argument ..................................................................................................................... 42
C. Requested Relief ..................................................................................................................... 45
CONCLUSION ..................................................................................................................... 46
PRAYER FOR RELIEF ..................................................................................................................... 47
CERTIFICATE OF SERVICE ..................................................................................................................... 48
APPENDIX / EXHIBIT LIST ..................................................................................................................... 49
TABLE OF AUTHORITIES
Cases
Statutes
Rules
INTRODUCTION
Plaintiff Optiwave Semiconductor Corp. ("OWS") respectfully submits these Motions in Limine in advance of the jury trial scheduled to commence on February 2, 2026, before the Honorable James R. Gilstrap. OWS files these motions to ensure that the trial is conducted fairly and efficiently, free from the introduction of irrelevant, prejudicial, and otherwise inadmissible evidence and argument that would confuse and mislead the jury.
This is a patent infringement action in which OWS asserts four United States utility patents covering silicon photonics transceiver and waveguide multiplexing technologies: U.S. Patent No. 10,234,847 (the "'847 Patent"), U.S. Patent No. 10,891,193 (the "'193 Patent"), U.S. Patent No. 9,678,562 (the "'562 Patent"), and U.S. Patent No. 11,402,015 (the "'015 Patent") (collectively, the "Asserted Patents"). The Asserted Patents represent the culmination of years of innovation in the design and manufacture of silicon-photonics transceiver modules—critical components that enable high-speed optical interconnects in modern hyperscale data centers.
OWS is a practicing entity. It is a fabless semiconductor company headquartered at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054. OWS employs approximately 1,250 people, including extensive research-and-development staff. In fiscal year 2023, OWS generated revenue of approximately $487.3 million, and it is recognized as the third-largest United States supplier of silicon-photonics transceiver modules for hyperscale data centers. OWS's commercial product families—including the OWS-400ZR, OWS-800XR, and OWS-1600DR product lines—practice the technology claimed in the Asserted Patents.
Defendant Lumicore Technologies, Inc. ("Lumicore") is headquartered at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. Lumicore manufactures and sells the accused products at issue in this case: the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR silicon-photonics transceiver modules (collectively, the "Accused Products"). The Accused Products compete directly with OWS's products in the same market and are sold to many of the same hyperscale data-center customers.
OWS filed its seven-count Complaint on April 22, 2024, alleging four counts of direct patent infringement under 35 U.S.C. § 271(a), one count of induced infringement under 35 U.S.C. § 271(b), one count of contributory infringement under 35 U.S.C. § 271(c), and one count of willful infringement. OWS seeks approximately $210 million in compensatory damages, enhanced damages under 35 U.S.C. § 284, attorney's fees under 35 U.S.C. § 285, and a permanent injunction. Lumicore has denied infringement and asserted invalidity as an affirmative defense.
This case has proceeded through extensive fact and expert discovery over the past twenty months. The Court entered its Scheduling Order on August 12, 2024 (D.E. 27), establishing the case schedule and setting trial for February 2, 2026. The pre-trial conference is scheduled for January 5, 2026. The jury trial is expected to last seven to ten days.
OWS now files six motions in limine seeking to exclude the following categories of evidence and argument:
Motion in Limine No. 1: Evidence and argument regarding OWS's private equity sponsor, Ridgeline Capital Partners, LP, and related litigation-funding arrangements, insurance coverage, and attorney fee structures.
Motion in Limine No. 2: Pejorative "patent troll," "non-practicing entity," and similar characterizations of OWS.
Motion in Limine No. 3: Lumicore's undisclosed opinion-of-counsel letters that were withheld during discovery on privilege grounds.
Motion in Limine No. 4: Prior-art references that Lumicore failed to identify in its P.R. 3-3 Invalidity Contentions served October 14, 2024.
Motion in Limine No. 5: Testimony from Lumicore's technical/validity expert, Dr. Rajesh Sundaram, on damages topics that fall outside his designated expert scope.
Motion in Limine No. 6: Evidence and argument regarding other patent litigations or enforcement actions involving OWS that are not the subject of this case.
Each of these motions is grounded in the Federal Rules of Evidence—principally Rules 401, 402, and 403—and applicable case law from the Federal Circuit and this District. OWS's motions seek to focus the jury's attention on the merits of the patent infringement claims, the validity of the Asserted Patents, and the appropriate measure of damages, while excluding collateral matters that would serve only to confuse, mislead, and prejudice the jury against OWS.
OWS respectfully submits that timely resolution of these motions in advance of trial will promote the efficient and orderly presentation of evidence and argument, and will enable counsel on both sides to prepare their trial presentations accordingly. OWS addresses each motion in turn below.
MOTION IN LIMINE NO. 1
TO EXCLUDE EVIDENCE OF OWS'S PRIVATE EQUITY SPONSOR INVOLVEMENT AND LITIGATION FUNDING
A. Background and Factual Context
OWS is majority-owned by Ridgeline Capital Partners, LP ("Ridgeline"), a private equity firm headquartered at 200 Clarendon Street, 40th Floor, Boston, Massachusetts 02116. Ridgeline acquired a 55% equity stake in OWS in 2019 in a transaction valued at approximately $780 million. Since its investment, Ridgeline has been actively involved in OWS's strategic direction, including through the appointment of Franklin Osei, Managing Partner of Ridgeline, as Chair of OWS's Board of Directors.
As part of OWS's enforcement of its intellectual property rights in this litigation, Ridgeline was involved in approving OWS's litigation budget. Specifically, OWS's Board of Directors approved a litigation budget of $18.5 million for the prosecution of this action pursuant to Board Resolution No. 2024-07. This resolution was informed by a letter from Franklin Osei to OWS's Chief Executive Officer, Rebecca Tanaka, dated April 2, 2024, in which Mr. Osei confirmed Ridgeline's support for the enforcement action and the allocation of the approved budget.
OWS retained Calderwood & Harkness LLP as its lead trial counsel, pursuant to an engagement letter dated March 18, 2024. The terms of the engagement were negotiated between OWS's management team, with input from Ridgeline, and Calderwood & Harkness. Among the terms of the engagement, the fee arrangement includes a blended cap rate of $925 per hour and a success fee component of 5% of any net recovery above $150 million. These fee arrangements are the product of arms-length negotiation and reflect standard market practices for complex patent litigation of this magnitude. They are, however, entirely irrelevant to any issue the jury will be called upon to decide.
OWS also maintains litigation-cost insurance through Pacific Rim Insurance Group under Policy No. PLI-2023-08812. This insurance policy was procured in the ordinary course of OWS's business operations and provides coverage for certain litigation costs and expenses. The existence of this insurance policy is likewise irrelevant to any issue in this case.
OWS anticipates that Lumicore and its counsel, Hawthorne Vega & Cruz LLP, may seek to introduce evidence or elicit testimony regarding Ridgeline's ownership stake in OWS, Ridgeline's role in approving the litigation budget, the success fee component of Calderwood & Harkness's engagement, the Pacific Rim litigation-cost insurance policy, or other aspects of OWS's litigation-funding arrangements. OWS further anticipates that Lumicore may attempt to use such evidence to suggest to the jury that this lawsuit is being driven not by the merits of OWS's patent claims, but by the financial interests of a private equity firm seeking a return on its investment, or that OWS is a well-funded plaintiff pursuing litigation for profit rather than to protect its intellectual property rights.
Such evidence and argument would be wholly irrelevant to any claim or defense in this case, and any marginal relevance would be vastly outweighed by the substantial danger of unfair prejudice, confusion of the issues, and misleading the jury. OWS respectfully requests that the Court exclude all such evidence and argument.
B. Legal Argument
Evidence is relevant only if "it has any tendency to make a fact more or less probable than it would be without the evidence" and "the fact is of consequence in determining the action." Fed. R. Evid. 401. Irrelevant evidence is not admissible. Fed. R. Evid. 402. Even where evidence possesses some marginal relevance, the Court "may exclude relevant evidence if its probative value is substantially outweighed by a danger of . . . unfair prejudice, confusing the issues, misleading the jury, undue delay, wasting time, or needlessly presenting cumulative evidence." Fed. R. Evid. 403.
The evidence that OWS seeks to exclude under this motion—Ridgeline Capital Partners' ownership stake, its role in approving the litigation budget, the success fee provisions of Calderwood & Harkness's engagement, and Pacific Rim Insurance Group's litigation-cost insurance policy—is irrelevant to every issue the jury will be called upon to decide. The issues for the jury are straightforward: (1) whether Lumicore's Accused Products infringe any valid claim of the Asserted Patents; (2) if so, whether such infringement was willful; and (3) the amount of damages. None of these issues is affected in any way by the identity of OWS's investors, the source of OWS's litigation funding, or the terms of OWS's fee arrangement with its counsel.
The identity and motives of OWS's majority shareholder bear no relevance whatsoever to whether the LumiLink 400G-ZR+, LumiLink 800G-DR8, or LumiEdge 1600G-LR modules practice the claims of the '847, '193, '562, or '015 Patents. Nor does the existence of a litigation budget or insurance policy have any bearing on the validity of the Asserted Patents or the amount of a reasonable royalty. These are quintessentially collateral matters that would serve only to distract the jury from the merits.
Even if this Court were to find some marginal relevance in the evidence, which OWS respectfully submits does not exist, such evidence should be excluded under Rule 403 because its probative value is substantially outweighed by the danger of unfair prejudice. Evidence regarding the financial sophistication, resources, and backing of a plaintiff's investors is classic "deep pockets" evidence that creates a substantial risk that the jury will decide the case on improper grounds. See Vaporstream, Inc. v. Snap Inc., No. 2:17-cv-00220, 2020 WL 364710, at 4 (C.D. Cal. Jan. 22, 2020) (excluding evidence of litigation funding arrangements as unduly prejudicial and irrelevant); see also Lubrizol Corp. v. Nat'l Union Fire Ins. Co.*, 982 F.2d 544, 548–49 (6th Cir. 1993) (recognizing the prejudicial potential of evidence regarding a party's financial resources and insurance coverage).
The introduction of evidence concerning Ridgeline Capital Partners carries a particularly acute risk of prejudice in this case. Lumicore would undoubtedly seek to paint OWS's patent enforcement as a profit-seeking exercise orchestrated by a Boston-based private equity firm, rather than a legitimate effort by a practicing semiconductor company to protect its innovation. Such a narrative would be calculated to invoke the jury's antipathy toward financial investors and to distract the jury from the technical and legal merits of OWS's claims. This is precisely the type of unfair prejudice that Rule 403 is designed to prevent. See Old Chief v. United States, 519 U.S. 172, 180 (1997) (recognizing that unfair prejudice under Rule 403 includes evidence that "lure[s] the factfinder into declaring guilt on a ground different from proof specific to the offense charged").
Additionally, the success fee component of Calderwood & Harkness's engagement and the terms of the Pacific Rim insurance policy are irrelevant to any issue in this case and would serve only to confuse the jury regarding the nature and purpose of the litigation. The fee arrangement between a plaintiff and its counsel is a private contractual matter that has no bearing on the merits of the underlying claims. Introducing evidence of contingency or success fee arrangements risks suggesting to the jury that OWS's counsel has an improper financial stake in the outcome, which could undermine the jury's confidence in the integrity of the proceedings without advancing any legitimate purpose.
Moreover, to the extent Ridgeline Capital Partners was involved in the approval of litigation strategy and the decision to bring this enforcement action, those communications are protected by the attorney-client privilege and the work-product doctrine. The involvement of a corporate parent or majority shareholder in approving a subsidiary's litigation strategy falls squarely within the scope of privileged communications. Lumicore should not be permitted to circumvent OWS's privilege protections by introducing evidence regarding the substance or circumstances of those communications before the jury.
Courts in this District and elsewhere have consistently recognized that evidence regarding litigation funding, insurance, and fee arrangements is not relevant to patent infringement claims and should be excluded under Rules 401, 402, and 403. See Vaporstream, 2020 WL 364710, at *4. The purpose of a jury trial in a patent case is to determine infringement, validity, and damages—not to probe the business relationships between a plaintiff and its investors or the financial terms of its legal representation.
C. Requested Relief
For the foregoing reasons, OWS respectfully requests that the Court enter an order:
1. Precluding Lumicore and its counsel, Hawthorne Vega & Cruz LLP, from referring to, questioning witnesses about, or presenting evidence of Ridgeline Capital Partners, LP's ownership stake in OWS, the $780 million acquisition, the role of Franklin Osei as Board Chair, or Ridgeline's involvement in any aspect of OWS's business or litigation strategy;
2. Precluding Lumicore from referring to, questioning witnesses about, or presenting evidence of OWS's litigation budget, Board Resolution No. 2024-07, or the April 2, 2024 letter from Franklin Osei to Rebecca Tanaka;
3. Precluding Lumicore from referring to, questioning witnesses about, or presenting evidence of the success fee component or any other terms of Calderwood & Harkness LLP's engagement letter dated March 18, 2024;
4. Precluding Lumicore from referring to, questioning witnesses about, or presenting evidence of Pacific Rim Insurance Group Policy No. PLI-2023-08812 or any other litigation-cost insurance maintained by OWS;
5. Precluding all of the foregoing references in voir dire, opening statements, examination of witnesses (fact or expert), expert reports or testimony, trial exhibits, demonstratives, and closing arguments; and
6. Granting such other and further relief as the Court deems just and proper.
MOTION IN LIMINE NO. 2
TO EXCLUDE PATENT-TROLL OR NON-PRACTICING ENTITY CHARACTERIZATIONS
A. Background and Factual Context
OWS is, by any measure, a practicing entity that designs, develops, and sells silicon-photonics transceiver modules in direct competition with Lumicore. OWS's commercial product families include the OWS-400ZR, OWS-800XR, and OWS-1600DR lines of transceiver modules, which are sold to hyperscale data-center operators across the United States and internationally. OWS's products embody and practice the technology claimed in the Asserted Patents.
OWS holds an extensive intellectual property portfolio. As of the date of this filing, OWS holds 142 issued United States patents and has 58 patent applications pending before the United States Patent and Trademark Office. OWS's patent portfolio reflects decades of research and development in the field of silicon photonics and optical interconnect technologies.
OWS's financial performance and employment base further confirm its status as a substantial operating company. In fiscal year 2023, OWS generated revenue of approximately $487.3 million, of which approximately $310 million was attributable to products that practice the Asserted Patents. OWS employs approximately 1,250 people, including a significant research-and-development organization led by Chief Technology Officer Dr. Jian-Wei Huang and Vice President of Engineering (Photonics Division) Dr. Nikolai Petrov. OWS's R&D team includes numerous engineers and scientists who are named inventors on OWS's patents.
Two of the four Asserted Patents—the '847 Patent and the '193 Patent—were developed internally by OWS through its own research-and-development efforts. The '015 Patent was also developed internally. The '562 Patent was acquired from Solara Optics, Inc. as part of a larger patent portfolio acquisition pursuant to an Asset Purchase Agreement dated June 15, 2018. In that transaction, OWS acquired the '562 Patent along with eleven other patents for a total purchase price of $34.5 million. Importantly, OWS acquired these patents not as a financial investment or for the purpose of assertion, but because they complemented OWS's existing technology and were incorporated into OWS's commercial products. The technology described in the '562 Patent has been integrated into OWS's product development and is practiced in OWS's OWS-400ZR and OWS-800XR product families.
OWS's competition with Lumicore in the silicon-photonics transceiver market is direct and undeniable. Both companies sell silicon-photonics transceiver modules designed for use in hyperscale data-center environments, and both companies compete for the same customers. Indeed, it was precisely this competitive overlap that led OWS to become aware of Lumicore's infringing activities and ultimately to file this action.
OWS is aware that Lumicore may attempt to characterize OWS as a "patent troll," "patent assertion entity," "non-practicing entity," or similar pejorative term in an effort to undermine OWS's credibility before the jury. OWS anticipates that Lumicore may base such characterizations on two facts: first, that OWS engaged FairPoint Licensing Group, LLC as a licensing agent to conduct pre-suit licensing outreach to Lumicore and other potential licensees; and second, that OWS acquired patents from Solara Optics, Inc. Neither of these facts supports a characterization of OWS as a non-practicing entity.
The use of a licensing agent is entirely commonplace in the technology industry. Major practicing entities routinely engage licensing intermediaries to manage their patent licensing programs, particularly when the patent holder's primary business focus is on product development and sales rather than on licensing negotiations. OWS's engagement of FairPoint Licensing Group was a prudent business decision that allowed OWS's management and engineering teams to remain focused on their core product-development responsibilities while ensuring that OWS's intellectual property rights were being appropriately monetized and enforced. The use of a licensing agent does not, and cannot, transform OWS from a practicing entity into a non-practicing entity.
Similarly, the acquisition of patents from Solara Optics is standard industry practice. Companies in the semiconductor and photonics industries frequently acquire patent portfolios from other companies—including companies that have ceased operations—in order to consolidate technology, protect against infringement by competitors, and strengthen their own product offerings. OWS acquired the Solara Optics patents because the technology they covered was directly relevant to OWS's commercial products, and OWS has incorporated that technology into its product lines.
B. Legal Argument
Any suggestion that OWS is a "patent troll," "patent assertion entity," "non-practicing entity," "patent pirate," "patent monetization entity," or any similar pejorative term is factually false and would be highly prejudicial to OWS. Such characterizations carry powerful negative connotations and have been used in public discourse and media coverage to stigmatize patent holders as entities that exploit the patent system without contributing genuine innovation. Regardless of whatever rhetorical force these terms may carry in public debate, they have no place in a jury trial where the issues are limited to infringement, validity, and damages.
The prejudice to OWS from such characterizations would be severe and irreversible. The terms "patent troll" and "non-practicing entity" are designed to invoke negative associations—greed, exploitation, manipulation—that would color the jury's perception of OWS from the outset. Once the jury is exposed to such characterizations, no curative instruction can fully undo the damage. The risk that the jury would decide this case based on an emotional reaction to loaded terminology, rather than on the merits of the patent claims and the evidence of infringement, is substantial and unacceptable. Fed. R. Evid. 403.
Courts have recognized that "patent troll" and similar epithets are prejudicial and should be excluded from patent trials. In Wi-LAN Inc. v. LG Electronics, Inc., No. 2:10-cv-00521, 2013 WL 6244305, at 3 (E.D. Tex. Nov. 8, 2013), this Court granted a motion in limine excluding "patent troll" characterizations, finding that such language would be unduly prejudicial and would confuse the issues. Similarly, in Innovation Sciences, LLC v. Hollowell & Co., No. 2:18-cv-00474-JRG, 2020 WL 1929476, at 2 (E.D. Tex. Apr. 21, 2020), this Court excluded "non-practicing entity" characterizations as prejudicial and irrelevant where they served only to cast aspersions on the plaintiff's motives rather than to address any issue the jury was called upon to decide. See also Finjan, Inc. v. Blue Coat Sys., Inc., No. 5:13-cv-03999, 2015 WL 4272870, at *3 (N.D. Cal. July 14, 2015) (excluding "patent troll" references as unduly prejudicial).
These decisions reflect a sound understanding that the labels "patent troll" and "non-practicing entity" are not legal terms of art with defined meanings, but rather are rhetorical devices designed to inflame passions and invite the jury to decide the case on improper grounds. As this Court has recognized, "[t]he right to enforce a patent in court is well established, and the jury should not be invited to penalize a patent holder for exercising that right." Wi-LAN, 2013 WL 6244305, at *3.
The case against allowing such characterizations is even stronger here, where OWS is indisputably a practicing entity. OWS designs, manufactures (through fabless arrangements), and sells the very types of products at issue in this case. OWS competes directly with Lumicore in the silicon-photonics transceiver market. OWS employs approximately 1,250 people and generated nearly half a billion dollars in revenue last fiscal year. OWS's R&D team is actively developing next-generation silicon-photonics technologies. Under these circumstances, any attempt to characterize OWS as a "patent troll" or "non-practicing entity" would be not merely prejudicial, but affirmatively misleading.
Lumicore cannot transform OWS into a non-practicing entity by pointing to OWS's engagement of FairPoint Licensing Group, LLC as a licensing agent or to OWS's acquisition of patents from Solara Optics. The use of a licensing intermediary is a common and legitimate business practice that has no bearing on whether the patent holder practices the patented technology. And the acquisition of patents is a routine feature of the technology industry that does not diminish the acquiring entity's status as a practicing company, particularly where, as here, the acquired patents have been incorporated into the acquirer's commercial products.
Moreover, any argument that OWS's assertion of patents acquired from Solara Optics is somehow improper or indicative of non-practicing status would be both factually incorrect and legally irrelevant. The patent laws provide the same protections to assignees as to original patentees. A patent holder's right to enforce its patents does not depend on whether the patent holder developed the patented technology in-house or acquired it through an arms-length transaction. See Innovation Scis., 2020 WL 1929476, at *2. Lumicore's attempt to suggest otherwise would serve only to confuse and mislead the jury.
C. Requested Relief
For the foregoing reasons, OWS respectfully requests that the Court enter an order:
1. Precluding Lumicore and its counsel from using the terms "patent troll," "non-practicing entity," "patent assertion entity," "patent pirate," "patent monetizer," "shell company," "paper company," or any similar pejorative characterization of OWS, OWS's licensing activities, or OWS's intellectual property enforcement program at any point during trial;
2. Precluding all such characterizations in voir dire, opening statements, examination of witnesses (fact or expert), expert reports or testimony, trial exhibits, demonstratives, and closing arguments;
3. Precluding Lumicore from arguing or suggesting to the jury that OWS's assertion of patents acquired from Solara Optics, Inc. is improper, suspect, or indicative of non-practicing status;
4. Precluding Lumicore from arguing or suggesting to the jury that OWS's engagement of FairPoint Licensing Group, LLC as a licensing agent renders OWS a non-practicing entity or is otherwise improper; and
5. Granting such other and further relief as the Court deems just and proper.
MOTION IN LIMINE NO. 3
TO EXCLUDE LUMICORE'S UNDISCLOSED OPINION-OF-COUNSEL LETTERS
A. Background and Factual Context
The factual record relevant to this motion establishes a clear pattern of Lumicore invoking the existence of opinion-of-counsel letters while simultaneously refusing to produce them.
On January 15, 2023, FairPoint Licensing Group, LLC, acting on behalf of OWS, sent a licensing letter to Lumicore identifying OWS's patent portfolio and inviting Lumicore to enter into a license agreement. The letter specifically identified the '847, '193, '562, and '015 Patents and provided claim charts mapping OWS's patent claims to Lumicore's LumiLink and LumiEdge product lines. This letter was received by Lumicore's General Counsel, Raymond Bautista, who acknowledged receipt in a letter dated February 2, 2023.
On July 10, 2023, Lumicore sent a letter to FairPoint Licensing Group declining to take a license under OWS's patents. In that letter, Lumicore stated, in pertinent part: "Lumicore has obtained competent legal opinions confirming that its products do not infringe any valid claim of the identified Optiwave patents. Accordingly, Lumicore sees no basis for a license and respectfully declines your proposal." A true and correct copy of Lumicore's July 10, 2023 letter is attached hereto as Exhibit 1.
The reference to "competent legal opinions" plainly refers to opinion-of-counsel letters—formal written opinions prepared by patent counsel addressing the infringement and/or validity of OWS's Asserted Patents as they relate to Lumicore's products. The existence and substance of these opinions are highly relevant to OWS's claim of willful infringement, as they bear directly on Lumicore's knowledge of OWS's patent rights and the reasonableness (or lack thereof) of Lumicore's belief that its products do not infringe.
During discovery, OWS sought production of the opinion-of-counsel letters referenced in the July 10, 2023 declination letter. Lumicore refused to produce the letters, asserting attorney-client privilege. Despite multiple meet-and-confer efforts—including three telephone conferences between OWS's Lead Associate Wendy Schultz and Lumicore's counsel Samantha Briggs of Hawthorne Vega & Cruz LLP, memorialized in a detailed correspondence from Ms. Schultz to Ms. Briggs dated October 14, 2024—Lumicore maintained its refusal to produce the opinions. A true and correct copy of the October 14, 2024 meet-and-confer correspondence is attached hereto as Exhibit 3.
On October 21, 2024, OWS filed a Motion to Compel Production of the opinion-of-counsel letters (D.E. 40), supported by a Memorandum in Support and the Declaration of Wendy Schultz. In its Motion to Compel, OWS argued that Lumicore had waived its attorney-client privilege with respect to the opinion letters by affirmatively referencing them in the July 10, 2023 declination letter and by asserting an advice-of-counsel defense to OWS's willful infringement claim. The Motion to Compel remains pending as of the date of this filing.
Raymond Bautista, Lumicore's General Counsel, was deposed on December 3, 2024. During his deposition, Mr. Bautista testified that he received the FairPoint Licensing Group's January 15, 2023 licensing letter and forwarded it to Lumicore's outside patent counsel within three business days. Mr. Bautista, however, refused to answer any questions regarding the substance of the opinion letters, including who prepared them, when they were prepared, or what conclusions they reached. Mr. Bautista asserted attorney-client privilege in response to each such question, on instruction from Lumicore's trial counsel. Excerpts from the December 3, 2024 deposition of Raymond Bautista are attached hereto as Exhibit 2.
Notably, Mr. Bautista also testified during his deposition that no formal design-around analysis was commissioned before the launch of the LumiEdge 1600G-LR product in the fourth quarter of 2023. This testimony is significant because it suggests that Lumicore proceeded with the launch of a product that OWS contends infringes the Asserted Patents without taking any steps to design around OWS's patent claims, and without any analysis of whether such design-around was feasible or had been accomplished. This testimony is relevant to OWS's willful infringement claim and to the question of Lumicore's subjective intent.
As of the date of this filing, Lumicore has not produced the opinion-of-counsel letters. Expert discovery closed on August 15, 2025. OWS's technical expert, Dr. Caroline Ashford of the Northfield Institute of Technology, and OWS's damages expert, Dr. Lawrence Keating of Meridian Economic Consulting Group, LLC, have both submitted their expert reports without the benefit of reviewing the opinion letters. Any eleventh-hour production of the letters would severely prejudice OWS, as its experts would have had no opportunity to analyze and respond to the opinions.
B. Legal Argument
OWS's motion is based on a straightforward principle: a party cannot simultaneously use the attorney-client privilege as a sword and a shield. Lumicore cannot withhold the opinion-of-counsel letters during discovery and then use the existence or substance of those opinions at trial to defeat OWS's willful infringement claim.
The law is well established that a party who asserts an advice-of-counsel defense to willful patent infringement must produce the underlying opinion letters. In In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc), the Federal Circuit addressed the standard for willful infringement and the role of opinion-of-counsel evidence. While Seagate held that the failure to obtain or produce an opinion of counsel is not itself evidence of willful infringement, the court also recognized that when a party does rely on an opinion of counsel, it must waive privilege and produce the opinion. Id. at 1368–70. The corollary is equally clear: if a party chooses not to waive privilege and refuses to produce the opinion, it may not rely on the existence of the opinion—whether directly, through witness testimony, or through attorney argument—to defeat a claim of willful infringement.
The Supreme Court's decision in Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), further supports OWS's position. In Halo, the Court rejected the Seagate framework's objective prong and held that enhanced damages under 35 U.S.C. § 284 require only a showing of "subjective willfulness." Id. at 105. The Court emphasized that willfulness turns on the infringer's subjective state of mind—whether the infringer knew of the patent and nonetheless acted in a manner that constituted "egregious" conduct. Id. at 103–04. Evidence of a party's reliance on advice of counsel is relevant to this subjective inquiry, but only if the party actually produces the opinion and subjects it to scrutiny by the opposing party and the court.
Here, Lumicore has engaged in precisely the type of sword-and-shield conduct that the law prohibits. Lumicore voluntarily referenced its "competent legal opinions" in the July 10, 2023 declination letter, signaling to OWS that it had obtained formal opinions supporting its non-infringement position. Having made this strategic choice to reference the opinions in the pre-litigation context, Lumicore then refused to produce the underlying letters during discovery, asserting privilege. Now, on the eve of trial, Lumicore may seek to rely on the existence or conclusions of these opinions—whether through Raymond Bautista's testimony, through argument by counsel, or through other witnesses—to suggest that its infringement was not willful because it relied on the advice of competent patent counsel.
The Court should not permit this tactic. If Lumicore chose to maintain privilege over the opinion letters and refused to produce them, the consequence of that choice is that Lumicore may not invoke the opinions at trial. This is a fundamental principle of discovery and trial practice: a party cannot withhold evidence during discovery and then use that same evidence at trial.
Furthermore, even if Lumicore were to attempt to produce the opinion letters at this late stage—after the close of expert discovery on August 15, 2025, and on the eve of trial—such production would be untimely and prejudicial. OWS's experts, Dr. Caroline Ashford and Dr. Lawrence Keating, have submitted their expert reports and completed their depositions without the benefit of reviewing the opinion letters. OWS's trial preparation and strategy have been developed without knowledge of the substance of the opinions. To permit Lumicore to introduce the opinions at trial after depriving OWS of the opportunity to address them during expert discovery would be fundamentally unfair and would constitute a classic trial-by-ambush that the discovery rules are designed to prevent. See Fed. R. Civ. P. 37(c)(1) (providing that a party that fails to provide information as required by the discovery rules may not use that information at trial).
OWS recognizes that the Motion to Compel (D.E. 40) remains pending before the Court. To the extent the Court has not yet ruled on that motion, OWS respectfully requests a definitive ruling prior to trial on the question of whether Lumicore may rely on the undisclosed opinion letters. The parties and the Court need clarity on this issue before trial commences, so that both sides may prepare their presentations accordingly. If the Court determines that the opinion letters must be produced, OWS respectfully requests sufficient time to have its experts review and respond to the opinions before trial. If the Court determines that the opinion letters need not be produced, then OWS respectfully requests that the Court preclude Lumicore from referencing the opinions at trial.
The integrity of the trial process depends on the consistent application of the discovery rules. Lumicore made a strategic choice to withhold the opinion letters. That choice should have consequences. The appropriate consequence is that Lumicore may not benefit from the opinions at trial. See Hollowell Industries v. Zimmer, Inc., 782 F.3d 649, 661 (Fed. Cir. 2015) (affirming enhanced damages where defendant failed to produce adequate opinion of counsel), aff'd 136 S. Ct. 1923 (2016); Halo, 579 U.S. at 105.
C. Requested Relief
For the foregoing reasons, OWS respectfully requests that the Court enter an order:
1. Precluding Lumicore from referencing, presenting, or relying upon at trial any opinion-of-counsel letters that were not produced to OWS during discovery;
2. Precluding Lumicore's witnesses—including, without limitation, Raymond Bautista (General Counsel), Dr. Sandra Michaud, Tom Kessler, and any other fact or expert witness—from testifying about the existence, content, conclusions, or recommendations of any undisclosed opinion-of-counsel letters;
3. Precluding Lumicore's counsel from arguing to the jury, in opening or closing statements, or at any other time, that Lumicore obtained legal advice or opinions supporting its non-infringement position, unless the underlying opinion letters were timely produced during discovery and OWS's experts were afforded a meaningful opportunity to address them;
4. Alternatively, if the Court has not yet ruled on OWS's Motion to Compel (D.E. 40), ruling on that motion prior to trial and, in the event the Court orders production, providing OWS with sufficient time to have its experts review and respond to the opinions; and
5. Granting such other and further relief as the Court deems just and proper.
MOTION IN LIMINE NO. 4
TO EXCLUDE PRIOR-ART REFERENCES NOT DISCLOSED IN LUMICORE'S INVALIDITY CONTENTIONS
A. Background and Factual Context
The Eastern District of Texas Patent Rules require a defendant asserting patent invalidity to serve detailed invalidity contentions identifying each item of prior art on which the defendant intends to rely. Specifically, Patent Rule 3-3 requires the accused infringer to disclose "each item of prior art that allegedly anticipates each asserted claim or renders it obvious," along with detailed claim charts mapping each prior-art reference to the elements of the asserted claims. Patent Rule 3-6 further provides that the deadline for amending invalidity contentions may only be extended by leave of the Court upon a showing of good cause.
In this case, the Court's Scheduling Order (D.E. 27, August 12, 2024) established a schedule for the parties' Patent Rule disclosures and set clear deadlines for the service of invalidity contentions. Lumicore served its P.R. 3-3 Invalidity Contentions on October 14, 2024 (D.E. 36). In those contentions, Lumicore identified a total of twenty-three (23) prior-art references across the four Asserted Patents. A true and correct copy of Lumicore's P.R. 3-3 Invalidity Contentions (without exhibits) is attached hereto as Exhibit 4.
The key prior-art references identified in Lumicore's invalidity contentions include, among others: (1) Takahashi et al., "Silicon-Photonic Waveguide Multiplexing for Multi-Channel Transceivers," IEEE Photonics Technology Letters, Vol. 26, No. 6, pp. 552–555 (March 2014); (2) U.S. Patent No. 8,412,007 to Bergmann, issued April 2, 2013; (3) PCT/EP2015/071234 (Simonsen), published September 17, 2015; (4) Dr. Li Wei, "Integrated Silicon Photonic Transceiver Architecture for Next-Generation Data Centers," Optical Fiber Communication Conference (OFC 2013), March 2013; and (5) Lumicore's own internal design documents from 2016–2017, which Lumicore has identified as purported prior art under 35 U.S.C. § 102(a).
Lumicore retained Marlowe Asset Management Patent Analytics, Inc., located at 1100 Peachtree Street NE, Suite 2200, Atlanta, Georgia 30309, to conduct prior-art searches in connection with its invalidity defense. Lumicore's technical/validity expert, Dr. Rajesh Sundaram of Pacific Western University in San Diego, California, has prepared an expert report in which he opines on the invalidity of the Asserted Patents based on the prior-art references identified in Lumicore's invalidity contentions.
OWS's technical expert, Dr. Caroline Ashford of the Northfield Institute of Technology, has prepared a rebuttal expert report addressing each of the twenty-three prior-art references identified in Lumicore's invalidity contentions. Dr. Ashford's analysis was necessarily limited to the references that were timely disclosed, as she could not have addressed references that Lumicore did not identify.
OWS is concerned that Lumicore may attempt to introduce at trial prior-art references that were not identified in its P.R. 3-3 Invalidity Contentions. Any such attempt would violate the Court's Scheduling Order, the local Patent Rules, and fundamental principles of fairness.
B. Legal Argument
The Eastern District of Texas Patent Rules serve a critical function: they ensure that both parties have adequate notice of the claims and defenses at issue and a fair opportunity to prepare their cases for trial. As this Court has repeatedly recognized, the Patent Rules are designed "to prevent the type of trial by ambush that had plagued patent litigation prior to the adoption of the rules." Kaneka Corp. v. Xiamen Kingdomway Grp. Co., No. 2:11-cv-00103-JRG, 2013 WL 3810671, at *2 (E.D. Tex. July 22, 2013).
Patent Rule 3-3 requires the disclosure of each item of prior art on which the defendant intends to rely, together with detailed claim charts. Patent Rule 3-6 limits a party's ability to amend its invalidity contentions after the initial deadline, requiring a showing of good cause. These requirements are strictly enforced in this District. See Iridescent Networks, Inc. v. Camberwell Enterprises Mobility, LLC, No. 2:16-cv-00843-JRG, 2018 WL 3212818, at 3 (E.D. Tex. June 29, 2018) (striking untimely invalidity contentions); O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc.*, 467 F.3d 1355, 1365–66 (Fed. Cir. 2006) (affirming exclusion of prior-art references not timely disclosed in invalidity contentions).
Any prior-art reference that was not identified in Lumicore's P.R. 3-3 Invalidity Contentions served on October 14, 2024, should be excluded at trial. Lumicore has had the benefit of extensive prior-art searches conducted by Marlowe Asset Management Patent Analytics, Inc., and has had ample opportunity to identify all prior art on which it intends to rely. The Patent Rules required Lumicore to make those disclosures by the deadline set in the Court's Scheduling Order, and Lumicore did so, identifying twenty-three references. Having made that disclosure, Lumicore should be held to it.
Permitting Lumicore to introduce undisclosed prior-art references at trial would cause severe prejudice to OWS. Dr. Caroline Ashford, OWS's technical expert, prepared her rebuttal report based on the twenty-three references identified in Lumicore's invalidity contentions. If Lumicore were permitted to introduce new references at trial, Dr. Ashford would not have had the opportunity to analyze those references, compare them to the Asserted Patents, and prepare rebuttal opinions. OWS would effectively be ambushed at trial with prior art that it had no opportunity to address during expert discovery.
This is precisely the type of harm that the Patent Rules and the Court's Scheduling Order are designed to prevent. The Court should enforce its own rules and preclude Lumicore from relying on any prior-art reference not identified in its timely served invalidity contentions. See Fed. R. Civ. P. 37(c)(1) ("If a party fails to provide information or identify a witness as required by Rule 26(a) or (e), the party is not allowed to use that information or witness to supply evidence on a motion, at a hearing, or at a trial, unless the failure was substantially justified or is harmless."); Kaneka, 2013 WL 3810671, at *3 (excluding undisclosed prior art as untimely and prejudicial).
OWS notes that this motion does not seek to exclude the twenty-three prior-art references that Lumicore properly identified in its invalidity contentions. OWS is fully prepared to address those references at trial through Dr. Ashford's testimony and through cross-examination of Dr. Sundaram. This motion is narrowly targeted at any new or undisclosed references that Lumicore may attempt to introduce for the first time at trial.
C. Requested Relief
For the foregoing reasons, OWS respectfully requests that the Court enter an order:
1. Precluding Lumicore from introducing, referencing, or relying upon at trial any prior-art reference that was not identified in Lumicore's P.R. 3-3 Invalidity Contentions served on October 14, 2024;
2. Applying this preclusion order to testimony by Dr. Rajesh Sundaram and any other defense witness, as well as to trial exhibits, demonstratives, and closing arguments;
3. Precluding Lumicore's counsel from arguing to the jury that the Asserted Patents are invalid based on any prior-art reference not identified in the P.R. 3-3 Invalidity Contentions; and
4. Granting such other and further relief as the Court deems just and proper.
MOTION IN LIMINE NO. 5
TO EXCLUDE TESTIMONY FROM DR. RAJESH SUNDARAM ON DAMAGES TOPICS OUTSIDE HIS DESIGNATED SCOPE
A. Background and Factual Context
Lumicore has designated two expert witnesses in this case, each with a clearly defined scope of expertise and opinion. Dr. Rajesh Sundaram, Professor of Electrical and Computer Engineering at Pacific Western University in San Diego, California, was designated as Lumicore's technical/validity expert. Dr. Natasha Volkov, a Partner at Pinnacle Analytics Partners LLP, located at 1000 Louisiana Street, Suite 3100, Houston, Texas 77002, was designated as Lumicore's damages expert. The expert disclosures identifying Dr. Sundaram and Dr. Volkov and their respective scopes are attached hereto as Exhibit 5.
As Lumicore's technical/validity expert, Dr. Sundaram's expert report and deposition testimony addressed issues of patent claim construction, infringement (or non-infringement), and the invalidity of the Asserted Patents based on the prior-art references identified in Lumicore's P.R. 3-3 Invalidity Contentions. Dr. Sundaram's report did not contain any damages analysis, and he was not disclosed as a damages expert.
As Lumicore's damages expert, Dr. Volkov has submitted an expert report addressing the appropriate reasonable royalty, if any, that should be awarded to OWS in the event the jury finds infringement. OWS has separately filed a Daubert motion challenging portions of Dr. Volkov's damages opinions, including her use of a disaggregated royalty base, her failure to conduct a full Georgia-Pacific analysis under Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970), and her reliance on non-comparable licenses. That Daubert motion is separately briefed and is not the subject of this motion in limine.
OWS has also separately filed a Daubert motion challenging certain portions of Dr. Sundaram's validity opinions, specifically his reliance on uncorroborated Lumicore internal documents in support of a prior-conception defense and his failure to account for material differences between the identified prior art and the claimed inventions. That Daubert motion is likewise separately briefed.
OWS's concern with respect to this motion in limine is distinct from the issues raised in the Daubert motions. OWS anticipates that at trial, Lumicore may attempt to have Dr. Sundaram offer opinions or testimony touching on damages topics that fall outside his designated scope as a technical/validity expert and squarely within the province of Dr. Volkov's damages testimony. Specifically, OWS is concerned that Lumicore may elicit from Dr. Sundaram opinions regarding:
(a) The value of the patented technology relative to the accused products as a whole;
(b) The availability and feasibility of non-infringing alternatives to the patented technology;
(c) The apportionment of value between the patented features and the unpatented features of the Accused Products;
(d) The incremental value contributed by the patented technology to Lumicore's revenues or profits; or
(e) Any other topic that bears directly on the calculation of a reasonable royalty or the measure of damages.
Such testimony would be improper because Dr. Sundaram was not disclosed as a damages expert. His expert report does not contain a damages analysis. He was not deposed on damages topics. OWS's trial strategy—including the preparation of its damages expert, Dr. Lawrence Keating of Meridian Economic Consulting Group, LLC, located at 233 South Wacker Drive, Suite 4400, Chicago, Illinois 60606—was calibrated solely against the damages opinions set forth in Dr. Volkov's expert report.
B. Legal Argument
Federal Rule of Civil Procedure 26(a)(2)(B) requires that expert disclosures contain "a complete statement of all opinions the witness will express and the basis and reasons for them." This requirement serves a critical purpose: it provides the opposing party with fair notice of the expert's opinions so that the opposing party can prepare to address those opinions through its own expert testimony, cross-examination, and argument. When an expert testifies at trial on topics that were not included in the expert's disclosure or report, the opposing party is deprived of this fundamental right of preparation.
Courts in this District and the Federal Circuit have consistently held that an expert may not testify beyond the scope of his or her designated opinions and the topics for which he or she was disclosed. See Fed. R. Civ. P. 37(c)(1) (precluding the use of evidence not disclosed as required by Rule 26); Fed. R. Evid. 702 (limiting expert testimony to the witness's "scientific, technical, or other specialized knowledge" that "will help the trier of fact"). To permit an expert to stray beyond the scope of his or her disclosure would effectively "circumvent the expert disclosure rules and deprive [the opposing party] of the opportunity to depose the expert on those topics." Cornell Univ. v. Hewlett-Packard Co., 609 F. Supp. 2d 279, 286–87 (N.D.N.Y. 2009).
Here, Dr. Sundaram was designated as a technical/validity expert. His expertise, as disclosed, lies in the field of electrical and computer engineering, with a focus on silicon photonics and optical interconnect technologies. He was not disclosed as a damages expert, and his report does not contain a damages analysis. Lumicore has a separately designated damages expert, Dr. Volkov, who has submitted her own expert report on damages topics. To allow Dr. Sundaram to offer damages opinions at trial would effectively give Lumicore a second damages expert—one whose opinions on damages were never disclosed, never reduced to a written report, and never subjected to deposition.
The prejudice to OWS would be substantial. OWS's damages expert, Dr. Lawrence Keating, prepared his expert report in response to Dr. Volkov's opinions. Dr. Keating's analysis was calibrated to address the specific methodologies, assumptions, and conclusions set forth in Dr. Volkov's report. If Dr. Sundaram were permitted to offer damages-related opinions at trial—particularly opinions regarding the value of the patented technology, the availability of non-infringing alternatives, or the apportionment of value—Dr. Keating would not have had the opportunity to address those opinions in his report or deposition. OWS would be forced to respond to previously undisclosed damages opinions in real time at trial, without the benefit of adequate preparation.
The Federal Circuit's apportionment jurisprudence makes this concern particularly acute. Under Ericsson, Inc. v. D-Link Systems, Inc., 773 F.3d 1201 (Fed. Cir. 2014), VirnetX, Inc. v. Sterling Reach Holdings, 767 F.3d 1308 (Fed. Cir. 2014), LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51 (Fed. Cir. 2012), and Uniloc USA, Inc. v. Kestrel Partners LLC, 632 F.3d 1292 (Fed. Cir. 2011), the damages analysis in a patent case must be conducted with rigor and must properly apportion the value attributable to the patented features as distinct from unpatented features. These are complex economic and technical questions that require the application of specialized damages methodologies. If Lumicore wishes to present evidence on these topics, it must do so through its properly disclosed damages expert, Dr. Volkov, whose opinions on these subjects have been fully vetted through the expert discovery process.
OWS does not seek to prevent Dr. Sundaram from testifying on technical or validity topics within the scope of his expert disclosure and report. Dr. Sundaram is of course free to offer his opinions on claim construction, infringement, and invalidity, to the extent those opinions are otherwise admissible. OWS's motion is narrowly focused on preventing Dr. Sundaram from exceeding his designated role and offering opinions on damages topics that are properly within the scope of Dr. Volkov's designation.
If Lumicore believes that technical context is necessary to support its damages case, that context should be provided through Dr. Volkov, who was properly disclosed as a damages expert and who is competent to incorporate technical considerations into her damages analysis. Alternatively, Lumicore may present such technical context through properly disclosed fact witnesses who have personal knowledge of the relevant technical and commercial facts. What Lumicore may not do is use Dr. Sundaram as a backdoor damages expert whose opinions were never subjected to the rigor of the expert disclosure and deposition process.
C. Requested Relief
For the foregoing reasons, OWS respectfully requests that the Court enter an order:
1. Limiting Dr. Rajesh Sundaram's testimony at trial to technical and validity topics within the scope of his expert disclosures and report;
2. Precluding Dr. Sundaram from offering opinions or testimony regarding damages calculations, royalty rates, royalty bases, apportionment, the value of the patented technology, the availability and cost of non-infringing alternatives, the incremental value of the patented features, or any other damages-related topic, to the extent such opinions were not included in his expert report and disclosure;
3. Instructing Lumicore's counsel that questions directed to Dr. Sundaram during direct or redirect examination must remain within the scope of his designated technical/validity opinions; and
4. Granting such other and further relief as the Court deems just and proper.
MOTION IN LIMINE NO. 6
TO EXCLUDE REFERENCE TO OTHER PENDING OWS PATENT LITIGATIONS
A. Background and Factual Context
As discussed above, OWS holds a substantial intellectual property portfolio comprising 142 issued United States patents and 58 pending patent applications. As a major participant in the silicon-photonics industry, OWS actively manages and enforces its intellectual property portfolio. OWS may be, or may have been, involved in other patent enforcement or licensing activities, whether through direct litigation, licensing through FairPoint Licensing Group, LLC, or otherwise.
OWS is concerned that Lumicore may attempt to introduce evidence or argument at trial regarding any other OWS patent litigations, licensing disputes, or enforcement actions that are not the subject of this case. The purpose of such evidence would be to portray OWS as a "serial litigator" or to suggest to the jury that OWS's enforcement of its patents in this case is part of an improper pattern of litigation activity, thereby casting aspersions on O