UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S PRE-TRIAL CONFERENCE STATEMENT
Filed: January 5, 2026
Prepared by:
Alan Ngo, Responsible Partner Calderwood & Harkness LLP 350 South Grand Avenue, 48th Floor Los Angeles, CA 90071
Marcus Delgado, Billing Partner Calderwood & Harkness LLP
Wendy Schultz, Lead Associate Calderwood & Harkness LLP
Omar Siddiqui, Working Associate Calderwood & Harkness LLP
James "Jim" Callahan, Local Counsel Whitmore & Callahan LLP 110 North College Avenue, Suite 800 Tyler, TX 75702
Attorneys for Plaintiff Optiwave Semiconductor Corp.
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I. INTRODUCTION AND NATURE OF THE ACTION
This is a patent infringement action filed on April 22, 2024, by Plaintiff Optiwave Semiconductor Corp. ("OWS" or "Plaintiff") against Defendant Lumicore Technologies, Inc. ("Lumicore" or "Defendant"), alleging infringement of four United States utility patents covering silicon photonics technologies used in optical transceiver and waveguide multiplexing systems for data-center interconnects. The four asserted patents are U.S. Patent Nos. 10,234,847 (the "'847 Patent"), 10,891,193 (the "'193 Patent"), 9,678,562 (the "'562 Patent"), and 11,402,015 (the "'015 Patent") (collectively, the "Asserted Patents").
OWS is a Delaware corporation headquartered at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054. OWS is the third-largest United States supplier of silicon-photonics transceiver modules for hyperscale data centers and employs approximately 1,250 people. In fiscal year 2023, OWS generated total revenue of approximately $487.3 million. OWS holds a portfolio of 142 issued United States patents and 58 pending patent applications, reflecting over a decade of sustained investment in research and development in the field of silicon photonics.
Lumicore is a Delaware corporation headquartered at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. Lumicore is a fast-growing entrant in the silicon-photonics transceiver market and completed its initial public offering on the Nasdaq stock exchange in March 2022. Since its entry into the market, Lumicore has rapidly expanded its product lines and customer base, in significant part by making, using, selling, offering to sell, and importing transceiver products that infringe OWS's patented technologies.
This case is set for a seven-to-ten-day jury trial beginning February 2, 2026, before the Honorable James R. Gilstrap, United States District Judge for the Eastern District of Texas, marshall Division. OWS seeks approximately $210 million in damages, comprising lost profits and reasonable royalties, as well as enhanced damages for willful infringement pursuant to 35 U.S.C. § 284. OWS further seeks a permanent injunction against Lumicore's continued infringement of the Asserted Patents.
This Pre-Trial Conference Statement is filed by OWS in accordance with the Court's Scheduling Order and Local Rules of the Eastern District of Texas to assist the Court in preparing for the pre-trial conference and trial.
II. PARTIES
A. Plaintiff — Optiwave Semiconductor Corp.
Plaintiff Optiwave Semiconductor Corp. ("OWS") is a corporation duly organized and existing under the laws of the State of Delaware. OWS's principal place of business and corporate headquarters is located at 4810 Bayside Technology Parkway, Suite 300, Santa Clara, California 95054. OWS's registered agent in the State of Delaware is Capitol Statutory Services, Inc., located at 1209 Orange Street, Wilmington, Delaware 19801. OWS's federal Employer Identification Number is 46-3921087.
OWS is led by the following key officers and executives:
• Chief Executive Officer: Dr. Priya Ramaswamy
• Chief Technology Officer: Dr. Jian-Wei Huang
• General Counsel: Rebecca Tanaka
• Vice President of Engineering, Photonics Division: Dr. Nikolai Petrov
• Chief Financial Officer: David Leitner
OWS's majority owner is Ridgeline Capital Partners, LP, a private equity firm that acquired a 55% ownership stake in OWS in 2019 for approximately $780 million. The Chair of OWS's Board of Directors is Franklin Osei, a designee of Ridgeline Capital Partners.
OWS designs, develops, manufactures (through foundry partnerships), and sells silicon-photonics transceiver modules and related components for use in hyperscale data-center interconnects and high-performance computing applications. OWS's key product families include the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver module families. These products practice one or more of the Asserted Patents and are deployed by a significant number of the world's largest hyperscale data-center operators.
OWS's independent auditor is Gresham & Whitfield LLP, operating through its San Jose, California office.
B. Defendant — Lumicore Technologies, Inc.
Defendant Lumicore Technologies, Inc. ("Lumicore") is a corporation duly organized and existing under the laws of the State of Delaware. Lumicore's principal place of business and corporate headquarters is located at 9200 Spectrum Boulevard, Building C, Austin, Texas 78759. Lumicore's registered agent in the State of Delaware is National Agent Services Corp., located at 850 New Burton Road, Suite 201, Dover, Delaware 19904. Lumicore's federal Employer Identification Number is 81-2547639.
Lumicore is led by the following key officers and executives:
• Chief Executive Officer: Thomas "Tom" Kessler
• Chief Technology Officer: Dr. Sandra Michaud
• General Counsel: Raymond Bautista
• Vice President of Product Development: Dr. Eric Dalmqvist
• Chief Financial Officer: Janet Moreno
Lumicore is publicly traded on the Nasdaq stock exchange, having completed its initial public offering in March 2022 at a price of $24.00 per share. As of the date the Complaint was filed in this action, Lumicore's share price was approximately $37.00 per share, representing a market capitalization of approximately $3.4 billion based on approximately 91.8 million shares outstanding. Lumicore reported estimated revenue of approximately $312.6 million for fiscal year 2023.
Lumicore's independent auditor is Brennan Kellogg & Associates LLP, operating through its Austin, Texas office.
Of direct relevance to venue and jurisdiction in this case, Lumicore maintains a sales office and technical support center at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701, which is located within the Eastern District of Texas.
C. Counsel
Plaintiff's Lead Counsel:
Calderwood & Harkness LLP represents OWS in this action. The attorneys primarily responsible for the conduct of the litigation are:
• Alan Ngo — Responsible Partner
• Marcus Delgado — Billing Partner
• Wendy Schultz — Lead Associate
• Omar Siddiqui — Working Associate
Calderwood & Harkness maintains offices at 350 South Grand Avenue, 48th Floor, Los Angeles, California 90071 and 1201 F Street NW, Suite 700, Washington, DC 20004.
Plaintiff's Local Counsel:
Whitmore & Callahan LLP serves as local counsel for OWS. The attorney primarily responsible is:
• James "Jim" Callahan
• 110 North College Avenue, Suite 800, Tyler, Texas 75702
Defendant's Lead Counsel:
Hawthorne Vega & Cruz LLP represents Lumicore in this action. The attorneys primarily responsible for the conduct of the defense are:
• Catherine "Kate" Rourke — Lead Partner
• Darren Cho — Second Chair Partner
• Samantha Briggs — Lead Associate
• Rohan Iyer — Working Associate
• 600 Congress Avenue, Suite 2400, Austin, Texas 78701
Defendant's Local Counsel:
Trask Eddington LLP serves as local counsel for Lumicore. The attorney primarily responsible is:
• Maria Garza
• 425 East Front Street, Suite 300, Tyler, Texas 75701
III. JURISDICTION AND VENUE
Subject-Matter Jurisdiction. This Court has original subject-matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1331 and 1338(a). The action arises under the patent laws of the United States, specifically 35 U.S.C. §§ 271 et seq., as OWS alleges that Lumicore has infringed and continues to infringe the Asserted Patents.
Personal Jurisdiction. Lumicore is subject to personal jurisdiction in the Eastern District of Texas. Lumicore maintains a sales office and technical support center at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701, and has systematic and continuous contacts with the district. Lumicore has made and continues to make sales of the accused products to customers located within the Eastern District of Texas, and Lumicore employees stationed at the Tyler facility provide ongoing technical support and sales services to those customers. Lumicore's contacts with the district are sufficiently continuous and systematic to support the exercise of both specific and general personal jurisdiction over Lumicore in this action.
Venue. Venue is proper in this Court under 28 U.S.C. § 1400(b). Lumicore has committed acts of infringement within the Eastern District of Texas, including making sales of accused products to customers located in the district, and Lumicore maintains a regular and established place of business at its Tyler, Texas facility. Specifically, Lumicore has sold accused products to at least three customers with facilities in the Eastern District of Texas:
1. Pinnacle Data Systems, LLC, located at 1800 Judson Road, Longview, Texas 75601;
2. Frontier Cloud Services, Inc., located at 400 East Houston Street, marshall, Texas 75670; and
3. CrossPoint Networking Corp., located at 7500 Dallas Parkway, Suite 200, Plano, Texas 75024 (transferred to the Tyler Division for case management purposes).
Lumicore filed a motion to transfer venue to the Western District of Texas, Austin Division, which this Court denied by Order dated August 5, 2024 (D.E. 25). The Court found that Lumicore's Tyler facility constitutes a regular and established place of business within the meaning of 28 U.S.C. § 1400(b) and that the convenience factors did not clearly favor transfer. The venue question has been definitively resolved for purposes of trial.
IV. STATEMENT OF CLAIMS AND CAUSES OF ACTION
A. Overview of Asserted Patents
OWS asserts four United States utility patents in this action. Each patent covers a distinct but complementary aspect of silicon-photonics technology used in optical transceiver modules for data-center interconnect applications. The following table summarizes the Asserted Patents:
The '562 Patent and the '847 Patent are in the same patent family and share a continuation relationship. The '193 Patent and the '015 Patent share common Provisional Application No. 62/499,117, filed April 7, 2017. All four Asserted Patents are currently in force, and all maintenance fees are current and have been timely paid.
OWS acquired the '562 Patent from Solara Optics, Inc. pursuant to an Asset Purchase Agreement dated June 15, 2018, under which OWS acquired a portfolio of twelve patents, including the '562 Patent, for a total purchase price of $34.5 million. OWS is the sole and exclusive owner of all right, title, and interest in each of the four Asserted Patents and has been at all relevant times.
Patent prosecution for the Asserted Patents was handled by Cascade IP Advisors, LLC, under the supervision of Lead Attorney Dr. Martin Chu, whose office is located at 1550 Crystal Drive, Suite 600, Arlington, Virginia 22202.
B. Accused Products
Lumicore manufactures, sells, offers to sell, and imports into the United States three product lines accused of infringing the Asserted Patents. The following table summarizes the accused products, their launch dates, estimated revenues, and the patents each product is accused of infringing:
The total revenue attributable to the accused products for fiscal year 2023 alone was approximately $264.9 million. From the initial launch of the first accused product in Q3 2022 through the approximate date of filing of the Complaint in Q1 2024, total accused-product revenue was approximately $378.2 million. Projected accused-product revenue from Q3 2022 through the anticipated end of Q4 2025 (i.e., through the date of trial) is approximately $714.6 million.
Each of the accused products is a silicon-photonics transceiver module designed for deployment in hyperscale data-center interconnect applications. Each product directly competes with OWS's own product lines — the OWS-400ZR, OWS-800XR, and OWS-1600DR families — which practice one or more of the Asserted Patents. The accused products incorporate the same fundamental silicon-photonics technologies claimed in the Asserted Patents, including multi-channel waveguide multiplexing, coherent optical transceiver integration on a silicon substrate, embedded micro-channel heat-sink structures for thermal management, and polarization-diverse grating couplers.
C. Causes of Action (Seven Counts)
OWS's Complaint asserts seven counts against Lumicore. Each count is summarized below.
Count I — Direct Infringement of the '847 Patent (35 U.S.C. § 271(a)). OWS alleges that Lumicore directly infringes Claims 1, 3, 5, 9, and 14 of the '847 Patent by making, using, selling, offering to sell, and importing the LumiLink 400G-ZR+ and LumiLink 800G-DR8 transceiver modules. The accused products each incorporate a multi-channel silicon photonic waveguide multiplexer with low insertion loss as claimed in the '847 Patent. OWS's technical expert, Dr. Caroline Ashford, has performed a detailed claim-by-claim, limitation-by-limitation analysis confirming that each accused product practices every element of the asserted claims.
Count II — Direct Infringement of the '193 Patent (35 U.S.C. § 271(a)). OWS alleges that Lumicore directly infringes Claims 1, 3, 7, 10, 15, and 18 of the '193 Patent by making, using, selling, offering to sell, and importing all three accused products — the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR. Each accused product integrates a high-bandwidth coherent optical transceiver on a silicon substrate as described and claimed in the '193 Patent. OWS asserts literal infringement of all asserted claims and, in the alternative, infringement under the doctrine of equivalents for Claims 3 and 7, specifically with respect to the "coherent detection module" limitation.
Count III — Direct Infringement of the '562 Patent (35 U.S.C. § 271(a)). OWS alleges that Lumicore directly infringes Claims 1, 4, 6, and 11 of the '562 Patent by making, using, selling, offering to sell, and importing the LumiLink 400G-ZR+ and LumiLink 800G-DR8 transceiver modules. The accused products each incorporate embedded micro-channel heat-sink structures for thermal management of photonic integrated circuits, as claimed in the '562 Patent. Benchmark Semiconductor Analysis, LLC's teardown analyses have confirmed the presence of these structures in each accused product.
Count IV — Direct Infringement of the '015 Patent (35 U.S.C. § 271(a)). OWS alleges that Lumicore directly infringes Claims 1, 5, 8, 12, and 16 of the '015 Patent by making, using, selling, offering to sell, and importing the LumiLink 800G-DR8 and LumiEdge 1600G-LR transceiver modules. Each accused product incorporates a polarization-diverse grating coupler for silicon photonic transceivers as described and claimed in the '015 Patent. OWS asserts literal infringement of all asserted claims and, in the alternative, infringement under the doctrine of equivalents for Claim 12, specifically with respect to the "two-dimensional sub-wavelength grating" limitation.
Count V — Induced Infringement (35 U.S.C. § 271(b)). OWS alleges that Lumicore actively induces infringement of all four Asserted Patents by its customers. Lumicore provides its customers with detailed technical documentation, integration guides, installation manuals, and direct technical support services that instruct and enable those customers to use, operate, and deploy the accused products in a manner that infringes the Asserted Patents. Lumicore has knowledge of the Asserted Patents — having been placed on actual notice no later than January 15, 2023, by FairPoint Licensing Group, LLC's licensing letter — and has specifically intended that its customers use the accused products in an infringing manner. Lumicore's technical support center in Tyler, Texas is one of the principal facilities through which Lumicore provides such support.
Count VI — Contributory Infringement (35 U.S.C. § 271(c)). OWS alleges that Lumicore contributorily infringes all four Asserted Patents by selling, offering to sell, and importing the accused products, which constitute material components of patented optical transceiver systems and which have no substantial non-infringing uses. The accused products are specifically designed, manufactured, and marketed for use in optical data-center interconnect configurations that practice the claims of the Asserted Patents, and the patented features are integral to the products' core functionality. Lumicore has knowledge of the Asserted Patents and knows that the accused products are especially made or especially adapted for use in an infringing manner.
Count VII — Willful Infringement and Request for Enhanced Damages (35 U.S.C. § 284). OWS alleges that Lumicore's infringement of the Asserted Patents has been willful and deliberate, warranting enhanced damages of up to three times the compensatory damages amount pursuant to 35 U.S.C. § 284. OWS's willfulness allegations are supported by the following evidence and circumstances:
(a) FairPoint Licensing Group, LLC, acting on behalf of OWS, sent a licensing and notice letter to Lumicore's General Counsel, Raymond Bautista, dated January 15, 2023, identifying the '847, '193, and '562 Patents and providing a detailed infringement analysis. This letter placed Lumicore on actual notice of the Asserted Patents and of OWS's infringement allegations.
(b) FairPoint sent a supplemental licensing letter to Lumicore on May 15, 2023, adding the '015 Patent to the notice and expanding the list of accused products to include the LumiLink 800G-DR8.
(c) An in-person licensing meeting took place on April 20, 2023, in Austin, Texas, between representatives of FairPoint/OWS and representatives of Lumicore and Hawthorne Vega & Cruz LLP. No resolution was reached at this meeting.
(d) Despite receiving actual notice of OWS's patent rights and infringement allegations, Lumicore continued to manufacture, sell, and import all three accused products and, moreover, launched the LumiEdge 1600G-LR in Q4 2023 — months after receiving notice of the Asserted Patents.
(e) In its July 10, 2023 declination letter, Lumicore stated that it had obtained "competent legal opinions" that its products do not infringe. However, Lumicore has refused to produce those opinion-of-counsel letters in discovery, asserting attorney-client privilege. OWS contends that Lumicore's selective reference to these opinions while refusing to disclose them gives rise to an adverse inference on the question of willfulness.
(f) Evidence obtained from Melissa Chen, a former Lumicore engineer who worked on the LumiLink 400G-ZR+ design team from 2020 to 2024 and is currently employed at Veridian Photonics, Inc., demonstrates that Lumicore's LumiLink 400G-ZR+ design team accessed and reviewed OWS's published patent application No. 2018/0123456 during the product design phase in 2021–2022. This evidence demonstrates that Lumicore had knowledge of OWS's patent rights even before the FairPoint licensing letters, further supporting a finding of willfulness.
D. Doctrine of Equivalents Assertions
In addition to its literal infringement theories, OWS asserts infringement under the doctrine of equivalents for certain claims of the '193 and '015 Patents. Specifically:
• Claims 3 and 7 of the '193 Patent: OWS contends that even if Lumicore's accused product designs do not literally satisfy the "coherent detection module" limitation recited in Claims 3 and 7, the corresponding element in the accused products performs substantially the same function, in substantially the same way, to achieve substantially the same result as the "coherent detection module" claimed in the '193 Patent.
• Claim 12 of the '015 Patent: OWS contends that even if Lumicore's accused product designs do not literally satisfy the "two-dimensional sub-wavelength grating" limitation recited in Claim 12, the corresponding element in the accused products performs substantially the same function, in substantially the same way, to achieve substantially the same result as the "two-dimensional sub-wavelength grating" claimed in the '015 Patent.
OWS's technical expert, Dr. Caroline Ashford, will provide detailed testimony at trial applying the function-way-result test to each of the foregoing doctrine-of-equivalents assertions.
V. STATEMENT OF DEFENSES AND COUNTERCLAIMS
A. Lumicore's Affirmative Defenses
Lumicore has asserted the following affirmative defenses in its Answer and Amended Answer:
Non-Infringement. Lumicore denies that the accused products infringe any asserted claim of any Asserted Patent, either literally or under the doctrine of equivalents. Lumicore contends that its accused products do not practice one or more limitations of each asserted claim.
Invalidity. Lumicore asserts that the asserted claims of the Asserted Patents are invalid under 35 U.S.C. §§ 102 and 103 for anticipation and/or obviousness. Lumicore has identified twenty-three prior-art references in its P.R. 3-3 Invalidity Contentions. The principal prior-art references include, but are not limited to:
• Takahashi et al., "Dense WDM Silicon Photonic MUX," IEEE Photonics Technology Letters (March 2014) — cited for anticipation of the '847 Patent;
• U.S. Patent No. 8,412,007 (Bergmann), issued April 2, 2013 — cited for obviousness of the '562 Patent;
• PCT/EP2015/071234 (Simonsen), dated September 17, 2015 — cited for obviousness of the '847 Patent;
• Dr. Li Wei, "Thermal Solutions for PICs," OFC 2013 Conference Paper (March 2013) — cited for anticipation of the '562 Patent; and
• Lumicore internal design documents dated 2016–2017 — cited for a prior-conception defense against the '015 Patent.
Unenforceability / Inequitable Conduct. Lumicore alleges that the '193 Patent is unenforceable due to inequitable conduct during prosecution, specifically asserting that Dr. Jian-Wei Huang, the named inventor, failed to disclose a material prior-art reference to the United States Patent and Trademark Office with the specific intent to deceive.
Prosecution History Estoppel. Lumicore asserts that prosecution history estoppel bars OWS's doctrine-of-equivalents theories with respect to Claims 3 and 7 of the '193 Patent and Claim 12 of the '015 Patent, based on narrowing amendments made during prosecution.
B. Lumicore's Counterclaims
Lumicore has asserted the following counterclaims:
1. Declaratory judgment of non-infringement of all four Asserted Patents;
2. Declaratory judgment of invalidity of all four Asserted Patents; and
3. Declaratory judgment of unenforceability of the '193 Patent based on inequitable conduct.
C. OWS's Response to Counterclaims
OWS filed its Reply to Defendant's Counterclaims on July 22, 2024 (D.E. 22), denying all of Lumicore's counterclaims in their entirety. OWS asserted affirmative defenses to the inequitable-conduct counterclaim, including that the allegedly undisclosed prior-art reference was cumulative of prior art already cited by the patent examiner during prosecution of the '193 Patent and that Lumicore cannot establish that Dr. Huang acted with the specific intent to deceive the USPTO, as required under Brightmoor & Co., Inc. v. Becton, Dickinson and Company, 649 F.3d 1276 (Fed. Cir. 2011) (en banc).
VI. STIPULATED FACTS
The parties have stipulated to the following facts, which are to be included in the Joint Pre-Trial Order and which the parties agree may be read to the jury or otherwise presented at trial without the need for further proof:
1. Optiwave Semiconductor Corp. is the owner by assignment of all right, title, and interest in the '847 Patent (U.S. 10,234,847), the '193 Patent (U.S. 10,891,193), and the '015 Patent (U.S. 11,402,015), and has been at all relevant times.
2. Optiwave Semiconductor Corp. acquired the '562 Patent (U.S. 9,678,562) from Solara Optics, Inc. via an Asset Purchase Agreement dated June 15, 2018, and is the current owner of all right, title, and interest therein.
3. All four Asserted Patents are utility patents duly issued by the United States Patent and Trademark Office and remain in force. All maintenance fees for each Asserted Patent are current and have been timely paid.
4. The '562 Patent and the '847 Patent are in the same patent family and share a continuation relationship.
5. The '193 Patent and the '015 Patent share common Provisional Application No. 62/499,117, filed April 7, 2017.
6. Lumicore Technologies, Inc. makes, uses, sells, offers to sell, and imports into the United States the LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR transceiver modules.
7. The LumiLink 400G-ZR+ was first commercially launched in Q3 2022; the LumiLink 800G-DR8 was first commercially launched in Q1 2023; and the LumiEdge 1600G-LR was first commercially launched in Q4 2023.
8. FairPoint Licensing Group, LLC, acting on behalf of OWS, sent a licensing and notice letter to Lumicore's General Counsel, Raymond Bautista, dated January 15, 2023, identifying the '847, '193, and '562 Patents and providing infringement allegations with respect to those patents.
9. Lumicore responded to the January 15, 2023 letter on February 28, 2023, through its outside counsel, Hawthorne Vega & Cruz LLP, disputing infringement and questioning the validity of the identified patents.
10. An in-person licensing meeting took place in Austin, Texas on April 20, 2023, between representatives of FairPoint Licensing Group/OWS and representatives of Lumicore/Hawthorne Vega & Cruz LLP. No resolution was reached at that meeting.
11. FairPoint Licensing Group, LLC sent a second licensing letter to Lumicore on May 15, 2023, adding the '015 Patent to the infringement allegations and expanding the list of accused products to include the LumiLink 800G-DR8.
12. Lumicore declined to take a license on July 10, 2023, in a letter from Hawthorne Vega & Cruz LLP to FairPoint Licensing Group, LLC, stating that Lumicore had obtained "competent legal opinions" that its products do not infringe the identified patents.
13. Lumicore maintains a sales office and technical support center at 2700 Earl Campbell Parkway, Suite 150, Tyler, Texas 75701.
14. The authenticity of the Asserted Patents and their complete prosecution histories is not in dispute.
VII. CONTESTED ISSUES OF FACT
The following issues of fact remain contested and will be submitted to the jury for determination at trial:
A. Infringement
1. Whether the LumiLink 400G-ZR+ transceiver module literally infringes Claims 1, 3, 5, 9, and 14 of the '847 Patent.
2. Whether the LumiLink 800G-DR8 transceiver module literally infringes Claims 1, 3, 5, 9, and 14 of the '847 Patent.
3. Whether each of the three accused products — the LumiLink 400G-ZR+, the LumiLink 800G-DR8, and the LumiEdge 1600G-LR — literally infringes Claims 1, 3, 7, 10, 15, and 18 of the '193 Patent.
4. Whether each of the accused products infringes Claims 3 and 7 of the '193 Patent under the doctrine of equivalents, specifically with respect to the "coherent detection module" limitation.
5. Whether the LumiLink 400G-ZR+ and the LumiLink 800G-DR8 literally infringe Claims 1, 4, 6, and 11 of the '562 Patent.
6. Whether the LumiLink 800G-DR8 and the LumiEdge 1600G-LR literally infringe Claims 1, 5, 8, 12, and 16 of the '015 Patent.
7. Whether the LumiLink 800G-DR8 and the LumiEdge 1600G-LR infringe Claim 12 of the '015 Patent under the doctrine of equivalents, specifically with respect to the "two-dimensional sub-wavelength grating" limitation.
8. Whether Lumicore actively induces infringement of the Asserted Patents by its customers through the provision of technical documentation, integration guides, and direct technical support.
9. Whether Lumicore contributorily infringes the Asserted Patents by selling, offering to sell, and importing products that have no substantial non-infringing use and that constitute material components of patented transceiver systems.
B. Willfulness
10. Whether Lumicore's infringement of the Asserted Patents was willful and deliberate, considering the totality of the circumstances, including but not limited to: pre-suit notice from FairPoint Licensing Group, LLC; Lumicore's design-phase awareness of OWS's published patent applications; continued product launches and sales after receipt of actual notice; and the adequacy and good faith of any opinion-of-counsel investigation undertaken by Lumicore.
11. Whether Lumicore's refusal to produce its opinion-of-counsel letters — referenced in its July 10, 2023 declination letter — gives rise to an adverse inference regarding the willfulness of its infringement.
C. Validity
12. Whether any asserted claim of the '847 Patent is anticipated by Takahashi et al., "Dense WDM Silicon Photonic MUX," IEEE Photonics Technology Letters (March 2014), or rendered obvious by Takahashi in combination with Simonsen (PCT/EP2015/071234, September 17, 2015).
13. Whether any asserted claim of the '562 Patent is anticipated by Dr. Li Wei, "Thermal Solutions for PICs," OFC 2013 Conference Paper (March 2013), or rendered obvious by U.S. Patent No. 8,412,007 (Bergmann), issued April 2, 2013, alone or in combination with other prior-art references.
14. Whether any asserted claim of the '193 Patent is invalid as anticipated or obvious over any of the eight prior-art references cited by Lumicore in its invalidity contentions for that patent.
15. Whether any asserted claim of the '015 Patent is invalid based on Lumicore's prior-conception defense relying on internal design documents dated 2016–2017, and whether such defense is adequately corroborated under the applicable legal standard.
16. Whether secondary considerations of non-obviousness — including commercial success, long-felt but unresolved need, failure of others, and evidence of copying — weigh in favor of the validity of the Asserted Patents.
D. Unenforceability / Inequitable Conduct
17. Whether Dr. Jian-Wei Huang failed to disclose a material prior-art reference during prosecution of the '193 Patent before the United States Patent and Trademark Office.
18. Whether any such failure to disclose was accompanied by the specific intent to deceive the USPTO, as required under Brightmoor & Co., Inc. v. Becton, Dickinson and Company, 649 F.3d 1276 (Fed. Cir. 2011) (en banc).
E. Damages
19. The appropriate amount of lost-profits damages to be awarded to OWS under the Panduit analysis, including whether each of the four Panduit factors is satisfied — demand for the patented product, absence of acceptable non-infringing substitutes, manufacturing and marketing capability to exploit the demand, and the amount of profit attributable to the lost sales.
20. The appropriate market-share displacement percentage to be applied in calculating lost profits. OWS contends that a displacement percentage of 38.2% is supported by the evidence of head-to-head competition at twelve of the top twenty hyperscale data-center operators.
21. The appropriate reasonable-royalty rate and royalty base for sales of accused products for which lost profits cannot be established. OWS proposes a reasonable-royalty rate of 8.5% of net sales of the accused products, applied to the non-lost-profit portion of accused-product revenue.
22. Whether the entire-market-value rule ("EMVR") properly applies to the accused transceiver modules such that the royalty base encompasses the entire price of each accused module, or whether apportionment to the smallest salable patent-practicing unit ("SSPPU") is required.
23. Whether enhanced damages are warranted in light of Lumicore's willful infringement and, if so, the appropriate enhancement multiplier under 35 U.S.C. § 284.
F. Injunctive Relief
24. Whether OWS is entitled to a permanent injunction under the four-factor test set forth in Northgate Group v. MercExchange, L.L.C., 547 U.S. 388 (2006), including whether OWS has demonstrated irreparable harm, the inadequacy of legal remedies at law, that the balance of hardships tips in OWS's favor, and that the public interest would not be disserved by a permanent injunction.
VIII. CONTESTED ISSUES OF LAW
The following issues of law remain contested between the parties and may require resolution by the Court either before or during trial:
1. Claim Construction. The proper construction of the twelve remaining disputed claim terms, as determined at the Markman hearing held on March 14, 2025, and as reflected in the Court's Claim Construction Order. The disputed terms include, but are not limited to, "waveguide multiplexer" ('847 Patent), "integrated on a silicon substrate" ('193 Patent), "micro-channel heat sink" ('562 Patent), and "polarization-diverse grating coupler" ('015 Patent). The Court's constructions will govern jury instructions and the parties' infringement and validity presentations at trial.
2. Prosecution History Estoppel. Whether prosecution history estoppel under Festo Corp. v. Fenmore & Co., 535 U.S. 722 (2002), bars OWS's doctrine-of-equivalents theories for Claims 3 and 7 of the '193 Patent, based on a narrowing amendment to the "coherent detection module" limitation made in response to a § 102 rejection over Takahashi et al. during prosecution, and for Claim 12 of the '015 Patent, based on a narrowing amendment to the "two-dimensional sub-wavelength grating" limitation made to overcome a § 103 rejection combining Bergmann and Simonsen.
3. Means-Plus-Function Limitations. Whether Claim 9 of the '847 Patent and Claim 15 of the '193 Patent contain means-plus-function limitations under 35 U.S.C. § 112(f), and if so, the corresponding structure disclosed in the patent specifications that defines the scope of those limitations.
4. Willful Infringement Standard. The proper legal standard for willful infringement under Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), including whether the evidence is sufficient to support a finding that Lumicore's conduct constituted the type of "egregious" behavior warranting enhanced damages.
5. Enhanced Damages — Read Factors. The proper application of the Read factors for determining enhanced damages under 35 U.S.C. § 284, including whether any enhancement should be applied and, if so, the appropriate multiplier.
6. Induced and Contributory Infringement. The proper legal standard for induced infringement under 35 U.S.C. § 271(b) and contributory infringement under 35 U.S.C. § 271(c), including the knowledge and intent requirements applicable to each theory.
7. Waiver of Attorney-Client Privilege. Whether Lumicore waived the attorney-client privilege as to its opinion-of-counsel letters by referencing them in its July 10, 2023 declination letter and by asserting an advice-of-counsel defense to willful infringement. OWS's Motion to Compel production of the opinion-of-counsel letters (D.E. 40) is pending, or has been resolved as reflected in the Court's order thereon.
8. Entire Market Value Rule vs. Apportionment. Whether the entire-market-value rule may properly be applied to the accused transceiver modules, such that the full module price serves as the royalty base, or whether apportionment to a smaller royalty base reflecting the smallest salable patent-practicing unit is required under VirnetX, Inc. v. Sterling Reach Holdings, 767 F.3d 1308 (Fed. Cir. 2014), and its progeny.
9. Prior-Conception Defense — Corroboration. Whether Lumicore's prior-conception defense with respect to the '015 Patent requires corroboration under the applicable standard, including whether Lumicore's internal design documents dated 2016–2017 are sufficiently corroborated by independent evidence to support the defense.
10. Standard of Proof for Invalidity. Whether the clear-and-convincing-evidence standard for invalidity under Kestrel Partners LLC v. i4i Limited Partnership, 564 U.S. 91 (2011), has been satisfied as to any asserted claim of any Asserted Patent.
11. Permanent Injunction — Cascade Holdings Factors. Whether OWS satisfies the four factors articulated in Northgate Group v. MercExchange, L.L.C., 547 U.S. 388 (2006), for the entry of a permanent injunction, including whether irreparable harm, the inadequacy of monetary damages, the balance of hardships, and the public interest favor injunctive relief.
IX. SUMMARY OF DISPOSITIVE AND DAUBERT RULINGS
The parties filed dispositive motions on September 15, 2025, and Daubert motions on November 1, 2025, in accordance with the Court's Scheduling Order. The following motions are pending or have been resolved as set forth below:
OWS's Motion for Partial Summary Judgment on Infringement of the '562 Patent (Claims 1, 4, and 6). OWS moved for partial summary judgment that the LumiLink 400G-ZR+ and LumiLink 800G-DR8 literally infringe Claims 1, 4, and 6 of the '562 Patent based on undisputed evidence from the Benchmark Semiconductor teardown analyses and Lumicore's own design documents. Status: Pending the Court's ruling, or as resolved by Order of the Court.
OWS's Motion for Partial Summary Judgment on Validity of the '015 Patent (Prior-Conception Defense). OWS moved for partial summary judgment that Lumicore's prior-conception defense against the '015 Patent fails as a matter of law because Lumicore's internal design documents dated 2016–2017 are insufficiently corroborated and, even if credited, do not demonstrate conception of each and every element of the asserted claims. Status: Pending the Court's ruling, or as resolved by Order of the Court.
Lumicore's Motions on Doctrine of Equivalents (Prosecution History Estoppel) and EMVR. Lumicore filed motions for summary judgment arguing that prosecution history estoppel bars OWS's doctrine-of-equivalents theories and that the entire-market-value rule cannot be applied. Status: Pending the Court's ruling, or as resolved by Order of the Court.
OWS's *Daubert* Motion to Exclude Dr. Rajesh Sundaram (Defendant's Validity Expert). OWS moved to exclude certain opinions of Lumicore's technical and validity expert, Dr. Rajesh Sundaram, on the grounds that his invalidity analysis fails to account for all claim limitations and relies on an incorrect construction of key claim terms. Status: Pending the Court's ruling, or as resolved by Order of the Court.
OWS's *Daubert* Motion to Exclude Dr. Natasha Volkov (Defendant's Damages Expert). OWS moved to exclude certain opinions of Lumicore's damages expert, Dr. Natasha Volkov, on the grounds that her royalty analysis is not reliably tied to the facts of the case and improperly apportions value away from the patented features. Status: Pending the Court's ruling, or as resolved by Order of the Court.
Lumicore's Anticipated *Daubert* Motion to Exclude Dr. Lawrence Keating (Plaintiff's Damages Expert). OWS understands that Lumicore has filed, or intends to file, a Daubert motion seeking to exclude certain opinions of OWS's damages expert, Dr. Lawrence Keating. Status: Pending the Court's ruling, or as resolved by Order of the Court.
To the extent any claims, defenses, or issues have been resolved by summary judgment or Daubert rulings prior to trial, this section will be updated to reflect those rulings and to narrow the issues for trial accordingly. OWS preserves all objections and rights to appeal any adverse rulings.
X. CLAIM CONSTRUCTION — REFERENCE TO MARKMAN ORDER
The Court conducted a Markman hearing on March 14, 2025, to construe disputed claim terms in the Asserted Patents. Following that hearing, the Court issued a Claim Construction Order construing twelve disputed claim terms. In addition, the parties agreed upon the construction of two additional terms in their Joint Claim Construction Statement (D.E. 40), filed October 28, 2024, bringing the total number of construed terms to fourteen.
The Court's constructions for the key disputed terms include, but are not limited to, the following:
• "waveguide multiplexer" ('847 Patent) — as construed by the Court's Claim Construction Order;
• "integrated on a silicon substrate" ('193 Patent) — as construed by the Court's Claim Construction Order;
• "micro-channel heat sink" ('562 Patent) — as construed by the Court's Claim Construction Order;
• "polarization-diverse grating coupler" ('015 Patent) — as construed by the Court's Claim Construction Order;
• and eight additional terms as construed by the Court.
The Court's claim constructions will govern the jury instructions on infringement and validity, and will be reflected in OWS's proposed jury charge and special verdict form. Both parties preserve all objections to the Court's claim constructions for appellate purposes.
OWS respectfully submits that the Court's claim constructions support OWS's infringement theories and are consistent with the plain language of the claims, the patent specifications, and the prosecution histories of the Asserted Patents.