UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
PLAINTIFF OPTIWAVE SEMICONDUCTOR CORP.'S PROPOSED JURY INSTRUCTIONS
Alan Ngo (Cal. Bar No. 247891) Responsible Partner Marcus Delgado (Cal. Bar No. 265413) Billing Partner Wendy Schultz (Cal. Bar No. 312087) Lead Associate Omar Siddiqui (D.C. Bar No. 1048762) Working Associate
CALDERWOOD & HARKNESS LLP 350 South Grand Avenue, 48th Floor Los Angeles, California 90071 Telephone: (213) 555-4800 Facsimile: (213) 555-4801
1201 F Street NW, Suite 700 Washington, DC 20004 Telephone: (202) 555-7100 Facsimile: (202) 555-7101
James "Jim" Callahan (Tex. Bar No. 03876214) Local Counsel
WHITMORE & CALLAHAN LLP 110 North College Avenue, Suite 800 Tyler, Texas 75702 Telephone: (903) 555-2300 Facsimile: (903) 555-2301
Attorneys for Plaintiff Optiwave Semiconductor Corp.
TABLE OF CONTENTS
PRELIMINARY INSTRUCTIONS
INSTRUCTION NO. 1
Introduction and Role of the Jury
Members of the jury, you have been selected and sworn to serve as jurors in this civil patent infringement case. This case is brought by Plaintiff Optiwave Semiconductor Corp. ("OWS") against Defendant Lumicore Technologies, Inc. ("Lumicore"). This is a civil case, not a criminal case.
OWS has sued Lumicore, alleging that Lumicore has infringed certain United States patents owned by OWS. OWS seeks money damages for that alleged infringement. Lumicore denies that it has infringed OWS's patents and contends that the asserted patents are invalid.
Your role as jurors is to decide the disputed issues of fact in this case. You must base your decision solely on the evidence presented at trial and the law as I instruct you. You must not consider any matters outside the evidence and these instructions. You must not conduct any independent research or investigation of any kind, including but not limited to searches on the internet, social media, or any other source.
It is my role, as the judge, to instruct you on the law that applies to this case. You must follow my instructions on the law, even if you personally disagree with the law or believe the law should be different. You must not substitute your own notion of what the law is or what the law should be. It is your role, and yours alone, to determine the facts from the evidence presented at trial. I play no part in finding the facts. If I make any comment or take any action during the trial that suggests how I view the facts or the merits, you should disregard that suggestion entirely. The determination of the facts is exclusively your province.
You should consider all of my instructions together as a connected whole and not give disproportionate attention to any single instruction.
INSTRUCTION NO. 2
Burden of Proof in Civil Cases
In a civil case such as this, the party who makes a claim has the burden of proving that claim. The burden of proving a claim is called the "burden of proof."
With respect to OWS's claims of patent infringement — including its claims of direct infringement, induced infringement, contributory infringement, and willful infringement — OWS bears the burden of proof. OWS must prove each of these claims by a "preponderance of the evidence."
"Preponderance of the evidence" means that OWS must prove that its version of a contested fact is more likely true than not true. Put differently, if you were to place the evidence supporting OWS's position on one side of a scale and the evidence opposing OWS's position on the other side of that scale, OWS's side must be at least slightly heavier. A preponderance of the evidence means more probable than not — more than fifty percent likely. If the evidence is evenly balanced, or if you cannot determine which side's evidence outweighs the other's, then OWS has not carried its burden, and you must find against OWS on that issue.
The preponderance-of-the-evidence standard applies to OWS's infringement claims. A different, higher standard — "clear and convincing evidence" — applies to Lumicore's invalidity defenses. I will instruct you separately on that standard when we reach the invalidity instructions.
The burden of proof does not require OWS to prove its case beyond a reasonable doubt. The "beyond a reasonable doubt" standard applies only in criminal cases and has no application here.
INSTRUCTION NO. 3
What Constitutes Evidence
You must base your decision in this case solely on the evidence admitted at trial. Evidence includes the following:
(a) The sworn testimony of witnesses, whether elicited on direct examination, cross-examination, redirect examination, or recross-examination, and whether the testimony is given in person in the courtroom or by video deposition;
(b) Documents and physical exhibits that have been admitted into evidence, including patent documents, claim charts, technical diagrams, product samples, financial records, correspondence, and demonstrative aids, to the extent I instruct you that they may be considered as evidence;
(c) Stipulations — that is, facts that the parties have agreed upon and that you must therefore accept as true; and
(d) Any facts that I have judicially noticed, which are facts I have determined are not subject to reasonable dispute because they are either generally known or can be determined from sources whose accuracy cannot be reasonably questioned. I will instruct you when I take judicial notice of a fact.
The following things are not evidence, and you must not consider them in reaching your verdict:
(a) Statements and arguments of the attorneys. The lawyers are advocates for their clients, and their statements, questions, objections, and arguments are not evidence. If an attorney's statement of the facts differs from the evidence as you remember it, it is your recollection of the evidence that controls;
(b) Questions asked by the attorneys, whether on direct or cross-examination. A question is not evidence; only the witness's answer is evidence;
(c) Testimony or exhibits that I have excluded or stricken, or that I have instructed you to disregard;
(d) Opening statements and closing arguments, which are intended to help you understand the evidence and the parties' contentions, but are not themselves evidence; and
(e) Anything you may have seen or heard about this case outside of the courtroom, including any media reports, internet postings, or other public commentary.
If evidence was admitted for a limited purpose, you must consider it only for that limited purpose and not for any other purpose.
INSTRUCTION NO. 4
Credibility of Witnesses
You are the sole judges of the credibility of each witness who testifies in this case and the weight to be given to each witness's testimony. This applies equally to fact witnesses and to expert witnesses. You are free to believe all, part, or none of any witness's testimony.
In evaluating the credibility of a witness, you may consider, among other things:
(a) The witness's opportunity to see, hear, or otherwise observe the matters about which the witness testified;
(b) The witness's ability to remember and relate the matters about which the witness testified;
(c) The witness's manner and demeanor while testifying;
(d) Whether the witness has any interest in the outcome of this case, any bias or prejudice, or any motive that might affect the witness's testimony;
(e) Whether the witness's testimony is consistent with the testimony of other witnesses or with other evidence in the case;
(f) Whether the witness has made statements at other times that are inconsistent with the testimony given at trial;
(g) The reasonableness of the witness's testimony in light of all the other evidence; and
(h) Any other factors that bear on the believability of the witness or the weight of the witness's testimony.
Expert witnesses are permitted to offer opinions on matters within their area of expertise. You should consider each expert's qualifications, experience, the basis for the expert's opinions, the reasoning and methodology the expert employed, and whether the expert's opinions are supported by the facts and data in the case. You are not required to accept any expert's opinion. You may give expert testimony whatever weight you find appropriate, and you may reject it entirely if you find it unreliable or unpersuasive. Where experts disagree, it is your role to determine which expert, if any, you find more credible and persuasive.
INSTRUCTION NO. 5
Parties Are Equal Before the Law
Both Plaintiff Optiwave Semiconductor Corp. and Defendant Lumicore Technologies, Inc. are corporations. Under the law, corporations are entitled to the same fair and impartial treatment as individual parties. You must not allow sympathy, prejudice, or bias to influence your decision in any way.
You should not be influenced by the size, wealth, or status of either party. The fact that OWS is a private company, or that it may be backed by a private equity sponsor, is not relevant to any issue you must decide. Similarly, the fact that Lumicore is a publicly traded company is not relevant to any issue you must decide. Your verdict must be based solely on the evidence admitted at trial and the law as I instruct you, without regard to the financial circumstances of either party.
You must give each party's evidence the same careful and fair consideration, regardless of the party that offered it, and you must decide each issue on the basis of the applicable law and the evidence, nothing more.
PATENTS AND CLAIMS AT ISSUE
INSTRUCTION NO. 6
What Is a Patent?
A United States patent is a right granted by the federal government to the owner of the patent — known as the "patentee" — that allows the patentee to exclude others from making, using, selling, offering to sell, or importing into the United States the patented invention for a limited period of time. For utility patents such as those at issue in this case, the patent term is generally twenty years from the date the patent application was filed.
It is important to understand what a patent does and does not do. A patent does not give the patentee the affirmative right to make, use, or sell the invention. Rather, a patent gives the patentee the right to exclude others from making, using, selling, offering to sell, or importing the patented invention. The distinction is significant. A patentee may hold a patent on an invention yet be unable to practice that invention itself, for example, because doing so would infringe someone else's patent. The essential right conferred by a patent is the right to exclude.
Patents are granted by the United States Patent and Trademark Office, commonly referred to as the "USPTO." Before a patent is granted, a patent examiner at the USPTO examines the patent application to determine whether the claimed invention meets the requirements of the patent laws, including that the invention is new (novel), not obvious, and adequately described. When the USPTO grants a patent, it issues a formal patent document that becomes part of the public record.
A patent consists of several parts. The most important parts for purposes of this case are:
(a) The claims, which appear at the end of the patent and define the legal boundaries of the patentee's right to exclude. The claims are the most important part of a patent for determining what the patent covers.
(b) The specification (also called the "written description"), which provides a detailed written description of the invention, including how to make and use it.
(c) The drawings or figures, which illustrate the invention and its components.
You will be provided with copies of the asserted patents and should review them as you consider the evidence in this case.
INSTRUCTION NO. 7
The Patents at Issue in This Case
Plaintiff Optiwave Semiconductor Corp. asserts four United States utility patents in this case. The four patents at issue are described below:
1. U.S. Patent No. 10,234,847 (the "'847 Patent")
The '847 Patent is entitled "Multi-Channel Silicon Photonic Waveguide Multiplexer with Low Insertion Loss." It was filed on September 14, 2016, and issued on March 19, 2019. The '847 Patent was originally assigned to OWS and is currently owned by OWS. The '847 Patent generally relates to a waveguide multiplexer design for silicon photonic circuits that achieves reduced signal loss when combining multiple optical channels onto a single waveguide.
2. U.S. Patent No. 10,891,193 (the "'193 Patent")
The '193 Patent is entitled "High-Bandwidth Coherent Optical Transceiver Integrated on Silicon Substrate." It was filed on April 7, 2017, and issued on January 12, 2021. The '193 Patent was originally assigned to OWS and is currently owned by OWS. The '193 Patent generally relates to a coherent optical transceiver design that is integrated on a silicon photonic substrate, enabling high-bandwidth optical communications.
3. U.S. Patent No. 9,678,562 (the "'562 Patent")
The '562 Patent is entitled "Method for Thermal Management of Photonic Integrated Circuits Using Embedded Micro-Channel Heat Sinks." It was filed on November 22, 2014, and issued on June 13, 2017. The '562 Patent was originally assigned to Solara Optics, Inc. OWS acquired the '562 Patent from Solara Optics, Inc. pursuant to an Asset Purchase Agreement dated June 15, 2018. The '562 Patent is currently owned by OWS. The '562 Patent generally relates to a method of managing heat in photonic integrated circuits through the use of embedded micro-channel heat-sink structures.
4. U.S. Patent No. 11,402,015 (the "'015 Patent")
The '015 Patent is entitled "Polarization-Diverse Grating Coupler for Silicon Photonic Transceivers." It was filed on August 30, 2019, and issued on August 2, 2022. The '015 Patent was originally assigned to OWS and is currently owned by OWS. The '015 Patent generally relates to a grating coupler design that accommodates multiple polarization states, allowing more efficient coupling of light into and out of silicon photonic transceiver circuits.
The '562 Patent and the '847 Patent are in the same patent family and share a continuation relationship, meaning that the '847 Patent claims priority to the disclosure in the application that led to the '562 Patent. The '193 Patent and the '015 Patent share a common provisional application — Provisional Application No. 62/499,117, filed April 7, 2017 — meaning that both patents may be entitled to the benefit of the filing date of that provisional application for purposes of determining what constitutes prior art.
INSTRUCTION NO. 8
The Asserted Claims and Accused Products
OWS does not assert every claim of the four patents at issue. Rather, OWS asserts specific claims of each patent against specific products manufactured, sold, offered for sale, or imported by Lumicore. The asserted claims and accused products are as follows:
'847 Patent — Claims 1, 3, 5, 9, and 14:
Asserted against the Lumicore LumiLink 400G-ZR+ and the Lumicore LumiLink 800G-DR8.
'193 Patent — Claims 1, 3, 7, 10, 15, and 18:
Asserted against the Lumicore LumiLink 400G-ZR+, the Lumicore LumiLink 800G-DR8, and the Lumicore LumiEdge 1600G-LR.
'562 Patent — Claims 1, 4, 6, and 11:
Asserted against the Lumicore LumiLink 400G-ZR+ and the Lumicore LumiLink 800G-DR8.
'015 Patent — Claims 1, 5, 8, 12, and 16:
Asserted against the Lumicore LumiLink 800G-DR8 and the Lumicore LumiEdge 1600G-LR.
It is essential that you evaluate each asserted claim of each patent against each accused product separately. A finding that one claim of one patent is infringed by one accused product does not necessarily mean that any other claim, patent, or product is infringed. Similarly, a finding that one claim of one patent is not infringed by one accused product does not necessarily mean that any other claim, patent, or product is not infringed. You must make a separate determination for each claim-product combination presented to you.
You will be asked to record your findings for each claim and each accused product on the special verdict form that I will provide at the close of evidence and arguments.
CLAIM CONSTRUCTION
INSTRUCTION NO. 9
Claim Construction — Court's Role
As I have explained, the claims of a patent define the boundaries of the patent holder's right to exclude others from making, using, selling, offering to sell, or importing the patented invention. The claims are written in formal language and often contain technical terms. Before trial, it is the Court's responsibility — not the jury's — to determine the meaning of disputed claim terms. This process is known as "claim construction."
On March 14, 2025, I conducted a claim construction hearing, sometimes referred to as a Markman hearing, at which the parties presented their positions on the meaning of certain disputed claim terms in the four asserted patents. Following that hearing, I entered a Claim Construction Order on April 28, 2025, in which I defined the meaning of fourteen disputed claim terms, as well as adopted certain agreed-upon constructions that the parties jointly proposed.
The claim constructions set forth in my Claim Construction Order are the law of this case. You must accept and apply the definitions I have given to the disputed claim terms. You may not adopt a different meaning for any term that I have construed. A copy of the relevant claim constructions will be provided to you in writing for use during your deliberations.
For claim terms that were not the subject of a dispute between the parties, and for which I did not enter a construction, you should give those terms their plain and ordinary meaning as understood by a person of ordinary skill in the art at the time of the invention.
The interpretation of patent claims is a legal question for the Court to decide as a matter of law, and the Supreme Court of the United States has so held. See Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). You must follow the Court's constructions without exception.
INSTRUCTION NO. 10
Claim Construction — Application by the Jury
While it is my role to construe the claims — that is, to define the meaning of the claim terms — it is your role to apply those construed claims to the accused products and to the prior art. This is a factual determination that is squarely within the province of the jury.
In applying the claims, you must compare each element or limitation of each asserted patent claim, as I have construed it, to the corresponding feature of each accused product. In doing so, you should read each claim as a whole and consider all of its limitations together.
A patent claim is infringed only if every limitation of that claim is met by the accused product, either literally or under the doctrine of equivalents (which I will explain in a later instruction). This principle is known as the "all-limitations rule" or the "all-elements rule." It means that you must consider each limitation of the claim individually and determine whether the accused product satisfies that limitation.
If even a single limitation of a claim is not met by the accused product — neither literally nor by an equivalent — then that claim is not infringed by that product, regardless of how many other limitations of the claim are satisfied. Every limitation must be present. There are no exceptions to this rule.
You should apply this same all-limitations analysis for each asserted claim, for each accused product, and for each patent.
DIRECT INFRINGEMENT — LITERAL INFRINGEMENT
INSTRUCTION NO. 11
Direct Infringement Under 35 U.S.C. § 271(a)
The patent laws of the United States provide that anyone who, without authority from the patent owner, makes, uses, sells, offers to sell, or imports into the United States any patented invention, during the term of the patent, infringes the patent. This is set forth in 35 U.S.C. § 271(a). This type of infringement is called "direct infringement."
Direct infringement is a strict-liability offense. This means that a party's intent or knowledge is irrelevant to whether direct infringement has occurred. A party can be liable for direct infringement even if the party did not know about the patent, did not intend to infringe, or made good-faith efforts to avoid infringement. The only question is whether the accused product in fact satisfies every limitation of the asserted patent claim.
In this case, OWS contends that Lumicore has directly infringed the asserted claims of the '847 Patent, the '193 Patent, the '562 Patent, and the '015 Patent by making, using, selling, offering to sell, and importing into the United States the accused Lumicore LumiLink 400G-ZR+, Lumicore LumiLink 800G-DR8, and Lumicore LumiEdge 1600G-LR products without the authority or consent of OWS. Lumicore denies that its accused products infringe any valid claim of any of the asserted patents.
It is OWS's burden to prove direct infringement by a preponderance of the evidence.
INSTRUCTION NO. 12
Literal Infringement Defined
There are two ways that a patent claim may be infringed: literally and under the doctrine of equivalents. I will first explain literal infringement. I will explain the doctrine of equivalents in subsequent instructions.
Literal infringement occurs when every limitation of a patent claim is found, identically, in an accused product. To prove literal infringement, OWS must show, by a preponderance of the evidence, that each and every limitation recited in the asserted patent claim is present in the accused product, as the claim has been construed by the Court.
In making this comparison, you must examine each claim limitation separately and determine whether the accused product contains a feature or element that corresponds to — and satisfies — that limitation. You should consider the testimony of the witnesses, both fact and expert, as well as the physical evidence, product samples, technical documentation, and any other exhibits that have been admitted into evidence.
If you find that even one limitation of the claim is absent from the accused product, you must find that there is no literal infringement of that claim by that product. You must make this determination separately for each asserted claim and for each accused product.
The comparison between the claim limitations and the accused product should be made on a claim-by-claim and product-by-product basis. A finding with respect to one claim or one product does not control the outcome as to any other claim or product.
INSTRUCTION NO. 13
Independent and Dependent Claims
You will hear the terms "independent claim" and "dependent claim" during this trial. Understanding the difference between them is important to your analysis.
An independent claim is a claim that stands on its own. It does not refer to or incorporate any other claim. An independent claim sets forth all of the limitations necessary to define the scope of the claimed invention.
A dependent claim is a claim that refers to and incorporates all of the limitations of another claim (called the "parent claim"), and then adds one or more additional limitations. A dependent claim is, by definition, narrower than the claim from which it depends, because it includes all the limitations of the parent claim plus at least one more.
The relationship between independent and dependent claims has the following consequence for your infringement analysis:
(a) If you find that an independent claim is not infringed by an accused product, then all dependent claims that depend from that independent claim are also not infringed by that accused product. This is because the dependent claims include all the limitations of the independent claim, and if the independent claim's limitations are not met, the dependent claim's limitations cannot be met either.
(b) However, the reverse is not true. If you find that a particular dependent claim is not infringed (because the accused product does not satisfy the additional limitation added by the dependent claim), this does not mean that the independent claim from which it depends is also not infringed. The independent claim may still be infringed if all of its own limitations are met.
You should evaluate each claim — whether independent or dependent — based on its own limitations, keeping in mind the relationship described above.
INSTRUCTION NO. 14
Means-Plus-Function Claim Limitations
Some patent claims contain what are known as "means-plus-function" limitations. These are claim limitations that are written in a particular format authorized by the patent statute, specifically 35 U.S.C. § 112(f). A means-plus-function limitation describes an element of the claimed invention not by identifying a specific structure, but by describing a function to be performed — for example, "means for amplifying a signal" or "means for coupling light."
When a claim limitation is written in means-plus-function format, the scope of that limitation is not as broad as the functional language alone might suggest. Instead, the law provides that a means-plus-function limitation covers only:
(a) The specific structure described in the patent specification (the written description) as performing the recited function; and
(b) Equivalents of that structure — that is, structures that perform the identical function in substantially the same way to achieve substantially the same result as the structure identified in the specification.
In this case, I have identified means-plus-function limitations in the following claims:
(a) Claim 9 of the '847 Patent: I have identified the corresponding structure disclosed in the specification of the '847 Patent for the means-plus-function limitation in that claim.
(b) Claim 15 of the '193 Patent: I have identified the corresponding structure disclosed in the specification of the '193 Patent for the means-plus-function limitation in that claim.
The identification of the corresponding structures for these means-plus-function limitations was set forth in my Claim Construction Order, and those identifications will be provided to you in writing. You must apply my identification of corresponding structure when determining whether the accused products satisfy these limitations. If the accused product uses the same structure identified in the specification, the limitation is met. If the accused product uses a different structure, you must determine whether that different structure is an equivalent of the structure identified in the specification — that is, whether it performs the identical function in substantially the same way to achieve substantially the same result.
DIRECT INFRINGEMENT — DOCTRINE OF EQUIVALENTS
INSTRUCTION NO. 15
Doctrine of Equivalents — General Principles
Even if the jury finds that a particular limitation of a patent claim is not literally present in an accused product, the jury may still find infringement under a legal doctrine known as the "doctrine of equivalents."
The doctrine of equivalents recognizes that the substance of an invention may be copied even though the letter of the patent claims is not violated. The purpose of the doctrine is to prevent an accused infringer from avoiding liability by making only insubstantial changes to the patented invention — changes that do not materially alter how the invention functions. Without this doctrine, a copyist could make trivial variations to the patented invention and escape liability, even though the copyist has in substance appropriated the invention.
In this case, OWS asserts infringement under the doctrine of equivalents as to the following specific claims:
(a) Claim 3 of the '193 Patent;
(b) Claim 7 of the '193 Patent; and
(c) Claim 12 of the '015 Patent.
The doctrine of equivalents must be applied on a limitation-by-limitation basis, not to the claim as a whole. This means that OWS must identify the specific claim limitation that it contends is met by an equivalent element in the accused product and must prove equivalence for that limitation. The doctrine of equivalents may not be used to effectively eliminate a claim limitation or to expand the claim beyond its proper scope.
OWS bears the burden of proving infringement under the doctrine of equivalents by a preponderance of the evidence.
INSTRUCTION NO. 16
The Function-Way-Result Test
The test most commonly used to determine equivalence is the "function-way-result" test. Under this test, an element in the accused product is equivalent to a claim limitation if:
(1) The accused element performs substantially the same function as the element recited in the claim;
(2) The accused element performs that function in substantially the same way as the element recited in the claim; and
(3) The accused element achieves substantially the same result as the element recited in the claim.
All three prongs must be satisfied for a finding of equivalence. The inquiry is whether the differences between the claim limitation and the accused element are insubstantial.
In this case, OWS specifically contends that:
(a) The "coherent detection module" limitation in Claims 3 and 7 of the '193 Patent is met under the function-way-result test by the corresponding component in the accused Lumicore products, even though the accused products may not contain an identical coherent detection module structure as described in the patent specification. OWS contends that the accused component performs substantially the same function, in substantially the same way, and achieves substantially the same result as the claimed coherent detection module.
(b) The "two-dimensional sub-wavelength grating" limitation in Claim 12 of the '015 Patent is met under the function-way-result test by the corresponding grating structure in the accused Lumicore products, even though the accused products may use a grating geometry that is not identical to the two-dimensional sub-wavelength grating described in the patent specification. OWS contends that the differences are insubstantial and that the function, way, and result are substantially the same.
OWS must prove equivalence by a preponderance of the evidence as to each claim limitation for which it invokes the doctrine of equivalents. You should consider all of the evidence, including expert testimony and technical evidence, in making this determination.
INSTRUCTION NO. 17
Prosecution History Estoppel as a Limitation on the Doctrine of Equivalents
The doctrine of equivalents is subject to an important legal limitation known as "prosecution history estoppel."
When a patent application is pending before the USPTO, the patent applicant and the patent examiner engage in a back-and-forth process called "prosecution." During prosecution, the examiner may reject one or more claims as anticipated or obvious in light of prior art. The applicant may respond by amending — that is, narrowing — the claims to distinguish the prior art cited by the examiner and overcome the rejection.
When a patent applicant narrows a claim during prosecution to overcome a rejection, the applicant cannot later use the doctrine of equivalents to recapture the subject matter that was given up by the narrowing amendment. The reason is one of fairness: a patent applicant should not be permitted to narrow its claims to obtain a patent and then turn around and assert, through the doctrine of equivalents, rights to the very subject matter it surrendered.
Under the Supreme Court's decision in Festo Corp. v. Fenmore & Co., 535 U.S. 722 (2002), if a narrowing amendment was made for a reason related to patentability, there is a presumption that the applicant surrendered all equivalents between the original claim scope and the amended (narrower) claim scope. This presumption may be overcome by the patentee if it can demonstrate one of the following:
(a) The alleged equivalent was unforeseeable at the time of the amendment;
(b) The rationale underlying the amendment bore only a tangential relation to the equivalent in question; or
(c) There is some other reason the patentee could not reasonably have been expected to have described the insubstantial substitute in question.
In this case, Lumicore contends that prosecution history estoppel bars OWS's doctrine-of-equivalents arguments as to the following:
(a) The "coherent detection module" limitation in the '193 Patent: Lumicore contends that this limitation was narrowed during prosecution in response to a rejection under 35 U.S.C. § 102 based on the Takahashi et al. reference. According to Lumicore, the narrowing amendment surrendered the equivalent now asserted by OWS.
(b) The "two-dimensional sub-wavelength grating" limitation in the '015 Patent: Lumicore contends that this limitation was narrowed during prosecution in response to a rejection under 35 U.S.C. § 103 based on a combination of the Bergmann patent (U.S. Patent No. 8,412,007) and the Simonsen PCT application (PCT/EP2015/071234). According to Lumicore, the narrowing amendment surrendered the equivalent now asserted by OWS.
OWS contends that, even if prosecution history estoppel applies, the Festo exception permits its doctrine-of-equivalents arguments because the amendments bore only a tangential relation to the equivalents at issue in this case.
If you find that prosecution history estoppel applies to a particular claim limitation, you may not find infringement under the doctrine of equivalents for that limitation unless OWS has demonstrated that one of the Festo exceptions applies.
INDUCED INFRINGEMENT
INSTRUCTION NO. 18
Induced Infringement Under 35 U.S.C. § 271(b)
In addition to direct infringement, the patent laws also impose liability on a party that induces others to infringe. Under 35 U.S.C. § 271(b), whoever actively induces infringement of a patent shall be liable as an infringer.
To prevail on a claim of induced infringement, OWS must prove each of the following elements by a preponderance of the evidence:
(1) An underlying act of direct infringement. There must be an actual, underlying act of direct infringement by a third party, such as a customer, end user, or integrator of the accused product. If no one directly infringes the patent, there can be no induced infringement.
(2) Knowledge. The alleged inducer — here, Lumicore — must have known of the asserted patents and known, or been willfully blind to the fact, that the acts it induced constituted infringement of those patents. "Willful blindness" means that the alleged inducer subjectively believed that there was a high probability that its conduct constituted inducement of infringement and took deliberate actions to avoid learning of that fact.
(3) Active encouragement. The alleged inducer must have actively and knowingly aided, abetted, or encouraged the direct infringement. Merely selling a product that happens to be used in an infringing manner is not enough. The inducer must have taken affirmative steps to bring about the infringing conduct — for example, by providing the product together with instructions, technical documentation, installation guides, training, or support services that specifically direct or encourage the customer to use the product in an infringing manner.
OWS contends that Lumicore induced infringement of all four asserted patents by selling the accused LumiLink 400G-ZR+, LumiLink 800G-DR8, and LumiEdge 1600G-LR products together with technical documentation, product datasheets, application notes, installation guides, and customer-support services that instruct and encourage Lumicore's customers to configure and use the products in a manner that infringes the asserted patent claims.
Induced infringement requires a finding of specific intent. The jury must find that Lumicore specifically intended to induce the acts that constitute direct infringement and did so with knowledge that those acts constituted infringement (or with willful blindness to that fact). General knowledge that a product might be used in some infringing manner is not sufficient; the inducer must have intended to cause the specific acts of direct infringement.
CONTRIBUTORY INFRINGEMENT
INSTRUCTION NO. 19
Contributory Infringement Under 35 U.S.C. § 271(c)
In addition to direct infringement and induced infringement, the patent laws also impose liability for contributory infringement. Under 35 U.S.C. § 271(c), a party is liable for contributory infringement if it sells, offers to sell, or imports into the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process.
To prevail on a claim of contributory infringement, OWS must prove each of the following elements by a preponderance of the evidence:
(1) Sale or offer to sell, or importation. Lumicore sold, offered to sell, or imported into the United States a component, material, or apparatus for use in practicing the patented invention.
(2) Material part of the invention. The component, material, or apparatus constitutes a material part of the patented invention. A "material" part is one that is important to or significant in the operation of the patented invention.
(3) Knowledge of special adaptation. Lumicore knew that the component, material, or apparatus was especially made or especially adapted for use in an infringement of the patent. This means that the component was designed or adapted specifically for use in a way that infringes the asserted claims.
(4) No substantial non-infringing use. The component, material, or apparatus is not a staple article or commodity of commerce suitable for substantial non-infringing use. In other words, the accused component has no commercially significant use other than in the infringing combination. If the component has substantial non-infringing uses — that is, uses that do not involve infringement of the asserted patents — then it is not subject to contributory-infringement liability, even if it can also be used in an infringing manner.
OWS contends that Lumicore contributorily infringed all four asserted patents by selling the accused products, which OWS contends contain components that are especially made or adapted for infringing use and have no substantial non-infringing use. Lumicore denies contributory infringement and contends, among other things, that the accused products have substantial non-infringing uses.
You should evaluate the evidence presented regarding the uses of the accused products and their components in determining whether OWS has met its burden of proof on each element of contributory infringement.
WILLFUL INFRINGEMENT
INSTRUCTION NO. 20
Willful Infringement Defined
OWS contends not only that Lumicore infringed the asserted patents, but that Lumicore's infringement was willful. Willful infringement is a more serious form of infringement that may warrant an increase in the damages award, as I will explain in later instructions.
Willful infringement is not the same as mere infringement. As I have instructed you, direct infringement is a strict-liability offense that does not require any particular state of mind. Willful infringement, by contrast, requires a specific state of mind on the part of the infringer.
To prove willful infringement, OWS must show, by a preponderance of the evidence, that Lumicore either knew of the asserted patents or was willfully blind to them, and that Lumicore acted despite an objectively high likelihood that its actions constituted infringement of a valid patent, and that this objectively defined risk was either known to Lumicore or so obvious that it should have been known.
Under the Supreme Court's decision in Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. 93 (2016), enhanced damages for willful infringement are designed to address the most egregious cases of patent infringement — situations in which the infringer deliberately copies the patented invention, acts in bad faith, or otherwise engages in conduct that is sufficiently culpable to warrant a punitive sanction.
Willful infringement requires more than mere knowledge of the patent. It also requires more than a good-faith but incorrect belief regarding invalidity or non-infringement. Rather, willfulness involves a conscious decision to infringe, or such reckless disregard of the patent holder's rights that the infringer's conduct amounts to deliberate indifference.
OWS bears the burden of proving willfulness by a preponderance of the evidence.
INSTRUCTION NO. 21
Evidence Relevant to Willful Infringement
In deciding whether Lumicore's infringement, if any, was willful, you may consider all relevant evidence, including but not limited to the following:
(a) Pre-suit knowledge of the asserted patents. OWS contends that Lumicore had actual knowledge of three of the four asserted patents prior to the filing of this lawsuit. Specifically, OWS contends that FairPoint Licensing Group, LLC, acting as OWS's licensing agent, sent a written licensing and notice letter to Lumicore's General Counsel, Raymond Bautista, on January 15, 2023, identifying the '847 Patent, the '193 Patent, and the '562 Patent. OWS further contends that FairPoint sent a second written letter to Mr. Bautista on May 15, 2023, adding the '015 Patent to the notice and expanding the scope of accused products to include the LumiLink 800G-DR8.
(b) Licensing negotiations. OWS contends that an in-person licensing meeting was held on April 20, 2023, in Austin, Texas, between representatives of OWS — Angela Reeves of FairPoint Licensing Group and Rebecca Tanaka of OWS — and representatives of Lumicore — Raymond Bautista, Lumicore's General Counsel, accompanied by outside counsel Catherine "Kate" Rourke of Hawthorne Vega & Cruz LLP. OWS contends that the meeting did not result in a licensing agreement and that Lumicore refused to take a license.
(c) Reliance on legal advice. Lumicore contends that it obtained and relied upon competent legal opinions that its products do not infringe the asserted patents. Lumicore's July 10, 2023 letter to FairPoint Licensing Group stated that Lumicore had obtained "competent legal opinions" that its products do not infringe. You may consider whether Lumicore actually obtained such opinions, the extent and thoroughness of those opinions, and whether Lumicore's reliance on those opinions was reasonable and in good faith.
(d) Post-notice product launches. OWS contends that Lumicore continued to develop and launch new accused products even after receiving notice of OWS's patents. Specifically, OWS contends that the Lumicore LumiEdge 1600G-LR was launched in the fourth quarter of 2023, after Lumicore had received both the January 15, 2023 and May 15, 2023 notice letters.
(e) Evidence of access to OWS's published patent applications during product development. OWS contends that evidence from former Lumicore engineer Melissa Chen (now employed at Veridian Photonics, Inc.) will establish that Lumicore's engineering team reviewed OWS's published patent applications during the design phase of the LumiLink 400G-ZR+ product. OWS further contends that Lumicore's Chief Technology Officer, Dr. Sandra Michaud, admitted in deposition testimony that she personally reviewed OWS's published patent application No. 2018/0123456 (corresponding to the '193 Patent) during the LumiLink 400G-ZR+ design phase.
(f) Good-faith investigation. You may consider whether Lumicore undertook a good-faith investigation of the asserted patent claims, including before and after receiving OWS's notice letters.
(g) Design-around efforts. You may consider whether Lumicore attempted to design around the asserted patents. OWS contends that the evidence will show Lumicore did not commission a formal design-around analysis before launching the LumiEdge 1600G-LR.
The above list is not exhaustive. You may consider any evidence that you find relevant to the question of whether Lumicore's infringement, if any, was willful.
Your finding on willfulness is advisory to the Court. The ultimate decision on whether to award enhanced damages for willful infringement, and the amount of any such enhancement, rests with the Court. However, the Court will consider your finding on whether Lumicore's infringement was willful.
VALIDITY — BURDEN OF PROOF
INSTRUCTION NO. 22
Presumption of Validity
Under federal patent law, specifically 35 U.S.C. § 282, a patent issued by the United States Patent and Trademark Office is presumed valid. This presumption applies to each of the four patents asserted in this case: U.S. Patent Nos. 10,234,847; 10,891,193; 9,678,562; and 11,402,015.
The presumption of validity means that the jury must assume the patents are valid unless the Defendant, Lumicore, proves otherwise. A patent that has been issued by the USPTO has already undergone an examination process in which a patent examiner reviewed the application, considered the prior art, and determined that the claimed invention was entitled to a patent. The presumption of validity reflects the respect owed to the judgment of the patent examiner and the expertise of the USPTO.
It is Lumicore, not OWS, that bears the burden of proving that any asserted patent claim is invalid. OWS does not need to prove that its patents are valid; validity is presumed. If Lumicore fails to meet its burden of proving invalidity, then the patents remain valid.
I will instruct you separately on the standard of proof that Lumicore must meet to overcome the presumption of validity.
INSTRUCTION NO. 23
Clear and Convincing Evidence Standard
To overcome the presumption of validity and prove that any asserted claim of any asserted patent is invalid, Lumicore must present clear and convincing evidence of invalidity. The Supreme Court of the United States has held that this heightened standard applies to all invalidity defenses, whether based on anticipation, obviousness, or any other ground. See Kestrel Partners LLC v. i4i Ltd. Partnership, 564 U.S. 91 (2011).
"Clear and convincing evidence" is a higher standard than "preponderance of the evidence." While preponderance of the evidence means "more likely than not," clear and convincing evidence means that the evidence must be highly probable and must produce in your mind a firm belief or conviction that the allegation of invalidity is true.
This standard is higher than "more likely than not," but it is not as high as the "beyond a reasonable doubt" standard that applies in criminal cases. Clear and convincing evidence falls between those two standards.
If, after considering all of the evidence, you have a firm belief or conviction that a particular claim is invalid, then Lumicore has met its burden. If, on the other hand, the evidence leaves you with uncertainty — if you believe invalidity is possible or even likely, but do not have a firm conviction — then Lumicore has not met its burden, and you must find that the claim is valid.
The clear-and-convincing-evidence standard applies to all of Lumicore's invalidity defenses, including its defenses based on anticipation under 35 U.S.C. § 102, obviousness under 35 U.S.C. § 103, and prior conception and reduction to practice.
INVALIDITY — ANTICIPATION UNDER 35 U.S.C. § 102
INSTRUCTION NO. 24
Anticipation Defined
Lumicore contends that certain claims of the asserted patents are invalid because they were anticipated by the prior art. Anticipation is a defense to patent infringement based on the principle that a patent cannot validly claim an invention that was already known or described in the prior art before the patent was filed.
Under 35 U.S.C. § 102, a patent claim is invalid as anticipated if a single prior-art reference discloses every element of the claim, arranged or combined in the same way as the claim requires, before the effective filing date of the patent. In other words, the prior-art reference must describe or show the exact same invention as claimed in the patent.
To prove anticipation, Lumicore must show by clear and convincing evidence that a single prior-art reference contains each and every limitation of the asserted patent claim, arranged as the claim requires. The prior art may be a prior patent, a printed publication (such as a scientific journal article or conference paper), a prior public use of the invention, an offer for sale, or any other category specified by the patent statute.
Anticipation requires strict identity between the claim and the prior-art reference. If any element of the claim is missing from the reference, the claim is not anticipated by that reference. Unlike the obviousness analysis (which I will describe in a later instruction), anticipation cannot be based on a combination of multiple prior-art references. A single reference must disclose everything.
In this case, Lumicore contends that:
(a) Certain asserted claims of the '847 Patent are anticipated by the Takahashi et al. article entitled "Dense WDM Silicon Photonic MUX," published in IEEE Photonics Technology Letters in March 2014.
(b) Certain asserted claims of the '562 Patent are anticipated by the Dr. Li Wei conference paper entitled "Thermal Solutions for PICs," presented at the Optical Fiber Communications Conference (OFC 2013) in March 2013.
OWS denies that any asserted claim is anticipated by any prior-art reference.
You must determine, for each claim that Lumicore contends is anticipated, whether Lumicore has proven by clear and convincing evidence that every limitation of that claim is disclosed in the single prior-art reference upon which it relies.
INSTRUCTION NO. 25
Prior Art and Priority Dates
Whether a particular reference qualifies as "prior art" depends on when it was made available to the public relative to the effective filing date of the patent claim at issue. Generally, a reference is prior art if it was published, patented, publicly used, on sale, or otherwise publicly available before the effective filing date of the patent claim.
The effective filing dates — also referred to as "priority dates" — for each of the asserted patents are as follows:
'562 Patent (U.S. Patent No. 9,678,562): Filed November 22, 2014; issued June 13, 2017. The effective filing date for purposes of determining prior art is November 22, 2014. References that were publicly available before November 22, 2014 may qualify as prior art.
'847 Patent (U.S. Patent No. 10,234,847): Filed September 14, 2016; issued March 19, 2019. The effective filing date for purposes of determining prior art is September 14, 2016. References that were publicly available before September 14, 2016 may qualify as prior art. Note, however, that the '847 Patent is a continuation of the application that led to the '562 Patent, and if any claims of the '847 Patent are entitled to the benefit of the '562 Patent's filing date of November 22, 2014, the relevant priority date may be earlier.
'193 Patent (U.S. Patent No. 10,891,193): Filed April 7, 2017; issued January 12, 2021. The '193 Patent claims priority from Provisional Application No. 62/499,117, filed April 7, 2017. If the claims of the '193 Patent are entitled to the benefit of that provisional application, the effective filing date for purposes of prior art is April 7, 2017. References that were publicly available before April 7, 2017 may qualify as prior art.
'015 Patent (U.S. Patent No. 11,402,015): Filed August 30, 2019; issued August 2, 2022. The '015 Patent also claims priority from Provisional Application No. 62/499,117, filed April 7, 2017. The relevant effective filing date depends on whether the claims of the '015 Patent are entitled to the benefit of that provisional application. If so, the effective filing date is April 7, 2017. If not, the effective filing date is August 30, 2019.
Lumicore's invalidity contentions cite a total of twenty-three prior-art references across all four asserted patents. You will hear evidence at trial regarding each reference, its publication or availability date, and whether it qualifies as prior art.
If a reference does not predate the effective filing date of the patent claim against which it is asserted, it does not qualify as prior art and cannot be used to invalidate that claim.
INVALIDITY — OBVIOUSNESS UNDER 35 U.S.C. § 103
INSTRUCTION NO. 26
Obviousness Defined
Lumicore also contends that certain claims of the asserted patents are invalid as obvious under 35 U.S.C. § 103. While anticipation requires that a single prior-art reference disclose every element of a claim, obviousness asks a different question: even if no single reference discloses the entire claimed invention, would the claimed invention as a whole have been obvious to a person of ordinary skill in the art at the time the invention was made (or, under the America Invents Act, before the effective filing date of the claimed invention)?
A patent claim is invalid as obvious if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious to a person of ordinary skill in the relevant technical field. Unlike anticipation, an obviousness analysis can rely on the combination of teachings from two or more prior-art references. However, Lumicore must identify a reason why a person of ordinary skill in the art would have been motivated to combine the teachings of the references, and why such a person would have had a reasonable expectation of success in making the combination.
The obviousness inquiry must be conducted from the perspective of a person of ordinary skill in the art at the time of the invention, not with the benefit of hindsight. Courts have cautioned against what is called "hindsight bias" — the tendency to view an invention as obvious after it has been made, simply because the individual elements were known. The Supreme Court has warned that this kind of backward-looking reasoning is improper.
In this case, Lumicore contends that certain claims of the asserted patents are obvious based on combinations of prior-art references, including:
(a) As to the '562 Patent: a combination that includes the Bergmann patent (U.S. Patent No. 8,412,007, issued April 2, 2013) with additional references.
(b) As to the '847 Patent: a combination that includes the Simonsen PCT application (PCT/EP2015/071234, published September 17, 2015) with additional references.
Lumicore bears the burden of proving obviousness by clear and convincing evidence.
INSTRUCTION NO. 27
Graham v. John Deere Factors for Obviousness
In determining whether a patent claim is obvious, the Supreme Court, in Graham v. John Deere Co., 383 U.S. 1 (1966), set forth a framework that requires consideration of the following four factors:
(1) The scope and content of the prior art. You should consider the prior-art references identified by Lumicore and the technical information disclosed in those references. You should consider what the prior art, taken as a whole, taught a person of ordinary skill in the art at the relevant time.
(2) The differences between the claimed invention and the prior art. You should identify the specific differences, if any, between what the prior art disclosed and what the patent claims. If the prior art disclosed the identical invention, the claim is anticipated (not obvious). If there are differences between the prior art and the claimed invention, you must assess the significance of those differences.
(3) The level of ordinary skill in the art at the time of the invention. You should consider the general level of knowledge and skill possessed by a hypothetical person of ordinary skill in the relevant technical field at the time the invention was made. In this case, the parties' experts have offered opinions on the level of ordinary skill. OWS's expert, Dr. Caroline Ashford of the Northfield Institute of Technology, has testified that a person of ordinary skill in the art would have a Master's degree (M.S.) or doctorate (Ph.D.) in electrical engineering or photonics and at least three years of experience in the design of silicon-photonic integrated circuits. You may accept, reject, or modify this definition based on all the evidence.
(4) Objective indicia of non-obviousness (secondary considerations). I will instruct you separately on this factor in the next instruction.
You should consider all four Graham factors together. No single factor is necessarily dispositive. Your analysis should be objective, based on the evidence, and free from the influence of hindsight.
When evaluating whether the prior art renders a claim obvious, you must also consider whether a person of ordinary skill in the art would have had a motivation to combine the teachings of the references in the manner suggested by Lumicore. The mere fact that the individual elements of a claim were separately known in the prior art does not, by itself, establish that the combination would have been obvious. There must be some reason — whether it is a suggestion in the references themselves, a known problem to be solved, or a recognized design need — that would have led a person of ordinary skill to make the combination. Additionally, the person of ordinary skill must have had a reasonable expectation of success in achieving the combination.
INSTRUCTION NO. 28
Secondary Considerations of Non-Obviousness
The fourth Graham factor requires you to consider objective evidence of non-obviousness, sometimes referred to as "secondary considerations." These are real-world facts that may shed light on whether the claimed invention was truly obvious at the time it was made. Secondary considerations are important because they provide objective evidence that is often more reliable than the subjective testimony of experts, who inevitably evaluate obviousness with the benefit of hindsight.
The secondary considerations you should evaluate include the following:
(a) Commercial success. You should consider whether products embodying or practicing the patented invention have achieved commercial success in the marketplace. Commercial success may indicate that the invention satisfied a market need that the prior art failed to address. OWS contends that its OWS-400ZR and OWS-800XR products, which it asserts practice the asserted patents, have achieved significant commercial success. OWS generated total revenue of approximately $487.3 million in fiscal year 2023, of which approximately $310 million is attributable to products practicing the asserted patents. For commercial success to be probative of non-obviousness, there must be a nexus — a connection — between the claimed invention and the commercial success. The success must be attributable to the features claimed in the patent, not to other factors such as marketing, brand recognition, or features unrelated to the patented invention.
(b) Long-felt but unsolved need. You should consider whether there was a long-standing need in the industry for the solution provided by the patented invention, and whether that need went unmet for a significant period before the invention was made. The existence of a long-felt need that was not satisfied until the patented invention was made tends to show that the invention was not obvious. OWS contends there was a long-standing need in the silicon photonics industry for low-insertion-loss waveguide multiplexing, efficient thermal management for photonic integrated circuits, and polarization-diverse grating coupling.
(c) Failure of others. You should consider whether others in the field attempted to solve the same problem addressed by the patented invention and failed. If skilled researchers tried and failed to achieve what the patent claims, this tends to show that the claimed invention was not obvious. OWS contends that at least three competitors attempted similar designs before OWS's innovations without achieving the results claimed in the asserted patents.
(d) Copying. You should consider whether others, including the accused infringer, copied the patented invention rather than designing independently. Copying by an infringer tends to show that the invention was not obvious, because a sophisticated company's decision to copy an invention rather than design around it suggests that the company viewed the invention as