1014-00004 · Hawthorne Vega & Cruz LLP · Validity Defense Analysis

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MEMORANDUM

PRIVILEGED AND CONFIDENTIAL — ATTORNEY WORK PRODUCT

TO: Alan Ngo, Responsible Partner; Marcus Delgado, Billing Partner

FROM: Wendy Schultz, Lead Associate; Omar Siddiqui, Working Associate

DATE: December 2024

RE: Secondary Considerations of Non-Obviousness — Evidence Compilation and Analysis, Optiwave Semiconductor Corp. v. Lumicore Technologies, Inc., Case No. 2:24-cv-00319-JRG (E.D. Tex.)

CLIENT: Optiwave Semiconductor Corp. ("OWS" or "Optiwave")

MATTER: Patent Infringement Litigation — 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")

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I. Purpose and Executive Summary

The purpose of this memorandum is to compile and assess the evidence supporting secondary considerations of non-obviousness — also referred to as "objective indicia" of non-obviousness — for each of the four Asserted Patents in the above-referenced litigation. This memorandum is prepared in anticipation of three critical milestones in this case: (a) Dr. Caroline Ashford's expert validity report, which is due on June 15, 2025, pursuant to the Court's Docket Control Order; (b) rebuttal of Lumicore Technologies, Inc.'s ("Lumicore") invalidity contentions, which were served on October 14, 2024, and which cite a total of twenty-three prior-art references across the four Asserted Patents in support of challenges under 35 U.S.C. §§ 102 and 103; and (c) potential summary judgment motions on the issue of validity, which we anticipate Lumicore may file following the close of expert discovery.

This memorandum organizes the available evidence under the four principal categories of secondary considerations recognized by the Supreme Court in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), and extensively developed by the United States Court of Appeals for the Federal Circuit: (1) commercial success of products embodying the patented inventions; (2) long-felt but unsolved need in the relevant field for the solutions provided by the patented inventions; (3) failure of others in the art to achieve the results accomplished by the claimed inventions; and (4) copying of the patented inventions by the accused infringer, Lumicore Technologies, Inc.

Under Graham v. John Deere, secondary considerations are relevant to and must be considered as part of the obviousness inquiry under 35 U.S.C. § 103. The Federal Circuit has consistently held that these objective indicia serve as a critical check against the hindsight bias that inevitably pervades any after-the-fact analysis of whether an invention would have been obvious at the time it was made. The legal standard requires that the party asserting non-obviousness demonstrate a nexus between the claimed invention and the proffered secondary consideration evidence. A rebuttable presumption of nexus arises when the patentee's commercial product is coextensive with — or embodies — the claimed invention. As demonstrated herein, OWS's commercial products are substantially coextensive with the claims of the Asserted Patents, and the evidence of nexus is strong.

Based on our comprehensive review of the evidence developed to date — including internal OWS financial records, audited financial statements, deposition testimony of key fact witnesses from both OWS and Lumicore, product teardown analyses performed by Benchmark Semiconductor Analysis, LLC, licensing correspondence between FairPoint Licensing Group, LLC and Lumicore, and pre-deposition outreach to former Lumicore engineer Melissa Chen — we conclude that strong evidence exists across all four categories of secondary considerations, particularly commercial success and copying. This evidence will substantially bolster OWS's non-obviousness position with respect to all four Asserted Patents in the face of Lumicore's § 103 challenges. Copying evidence is especially compelling in this case, as it is supported by admissions from Lumicore's own Chief Technology Officer, anticipated corroborating testimony from a former Lumicore engineer, independent teardown analysis confirming structural similarity between accused and patented products, and Lumicore's continued launch of new accused products after receiving actual notice of OWS's patent rights.

II. Legal Framework

A. Standard for Secondary Considerations

The Supreme Court established the foundational framework for evaluating obviousness under 35 U.S.C. § 103 in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966). Under Graham, the obviousness determination involves a four-step inquiry: (1) determining the scope and content of the prior art; (2) ascertaining the differences between the prior art and the claims at issue; (3) resolving the level of ordinary skill in the pertinent art; and (4) evaluating objective indicia of non-obviousness, commonly referred to as "secondary considerations." Id. at 17–18. Although these factors are sometimes labeled "secondary," the Supreme Court and the Federal Circuit have consistently emphasized that they are an integral part of the obviousness analysis and must be considered whenever presented.

The Federal Circuit has repeatedly held that secondary considerations evidence is "not just a cumulative or confirmatory part of the obviousness calculus" but rather constitutes an independent and potentially dispositive component of the analysis. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012). In Transocean, the Federal Circuit reversed a district court's finding of obviousness, holding that the lower court had improperly discounted evidence of secondary considerations. The court emphasized that such evidence "may often be the most probative and cogent evidence in the record" and that it "may often establish that an invention appearing to have been obvious in light of the prior art was not." Id. (quoting Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983)).

Similarly, in Camberwell & Co. v. Quillon Corporation, 839 F.3d 1034, 1052–53 (Fed. Cir. 2016) (en banc), the Federal Circuit reaffirmed that secondary considerations must be considered and "can be the most probative evidence of non-obviousness in the record." The court held that a reasonable jury could rely on strong evidence of copying and commercial success to conclude that the claimed invention was non-obvious, even where a prima facie case of obviousness based on prior art references appeared strong. This holding underscores the importance of developing and presenting comprehensive secondary considerations evidence at trial.

A critical requirement for the admissibility and probative value of secondary considerations evidence is the establishment of a nexus between the objective indicia and the merits of the claimed invention. Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). The nexus requirement ensures that the proffered evidence is attributable to the novelty of the claimed invention rather than to extraneous factors such as superior marketing, brand recognition, pricing strategies, or features of the product that are not encompassed by the patent claims. The burden of establishing nexus rests on the patent holder, though a rebuttable presumption of nexus arises when the patentee demonstrates that its commercially successful product "is the invention disclosed and claimed in the patent." Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000); see also Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988).

Once the presumption of nexus attaches, the burden shifts to the party challenging the patent to rebut the presumption by presenting evidence that the commercial success, or other secondary consideration, is attributable to factors other than the patented invention. J.T. Eaton & Co. v. Atl. Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997). As discussed in detail below, OWS's commercial products are substantially coextensive with the claims of the Asserted Patents, establishing a strong presumption of nexus that Lumicore will be hard-pressed to rebut.

B. Categories of Secondary Considerations

The four principal categories of secondary considerations that have been recognized by the Federal Circuit and are most directly applicable to this case are:

1. Commercial Success. Evidence that products embodying the claimed invention have achieved significant commercial success in the marketplace is probative of non-obviousness because it suggests that the marketplace values the innovation and that the invention filled a demand that the prior art had failed to address. See Ashbury Enterprises v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1376 (Fed. Cir. 2005). The commercial success analysis is particularly strong here given the substantial revenue attributable to OWS's patent-practicing products.

2. Long-Felt but Unsolved Need. Evidence that a long-felt need existed in the art for the solution provided by the claimed invention, and that the need went unsolved despite efforts by persons skilled in the art, is probative of non-obviousness because it indicates that the solution was not readily apparent to those working in the field. See Millennium Pharm., Inc. v. Sandoz Inc., 862 F.3d 1356, 1369 (Fed. Cir. 2017). Long-felt need evidence is especially powerful when it can be demonstrated that the need was widely recognized in the industry and that multiple skilled artisans attempted to address it without success.

3. Failure of Others. Evidence that others in the field attempted to solve the same problem addressed by the claimed invention but failed to do so is strongly probative of non-obviousness. See Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321 U.S. 275, 279 (1944). Failure of others evidence is closely related to long-felt need evidence but focuses on the specific unsuccessful attempts by competitors, which demonstrate that the solution was not obvious even to skilled practitioners in the field.

4. Copying by the Infringer. Evidence that the accused infringer deliberately copied the patented invention, rather than independently developing its own solution, is among the most persuasive forms of secondary considerations evidence. See Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004) ("Copying is additional evidence of non-obviousness, for it is reasonable to conclude that one would not copy what would be obvious to design around."). Copying evidence is particularly probative when it can be shown that the infringer was aware of the patented invention and adopted the specific claimed features into its own products.

Additional categories of secondary considerations have been recognized by the Federal Circuit, including industry praise for the invention, licensing of the patent by third parties, unexpected results achieved by the invention, and skepticism of experts in the field regarding the feasibility of the patented approach. See, e.g., Ruiz v. A.B. Chance Co., 234 F.3d 654, 668 (Fed. Cir. 2000). These additional categories may be addressed in supplemental memoranda as further discovery and expert work develop. In particular, evidence of industry praise and unexpected results may emerge from Gregory Falk's industry expert report (due June 15, 2025) and from additional technical publications and conference proceedings identified during the expert discovery phase.

C. Person of Ordinary Skill in the Art (POSITA)

The definition of a person of ordinary skill in the art ("POSITA") is a critical element of the obviousness analysis, as it establishes the baseline knowledge and capabilities against which the claimed inventions are measured. In this case, OWS's technical expert, Dr. Caroline Ashford — a tenured professor of electrical engineering and photonics at the Massachusetts Institute of Technology with over twenty years of experience in silicon photonic integrated circuit design — defined the POSITA in her November 15, 2024 declaration submitted in support of OWS's Opening Claim Construction Brief.

According to Dr. Ashford's declaration, a person of ordinary skill in the art at the time of the inventions claimed in the Asserted Patents would have possessed a Master of Science (M.S.) or Doctor of Philosophy (Ph.D.) degree in electrical engineering, photonics, or a closely related field, and would have had at least three years of experience in the design, fabrication, or characterization of silicon-photonic integrated circuits, including experience with waveguide design, optical transceiver architecture, and photonic integrated circuit packaging and thermal management. This definition reflects the advanced and specialized nature of the technology at issue in this case, which resides at the intersection of semiconductor fabrication, optical engineering, and high-speed data communications.

Dr. Ashford's POSITA definition is expected to be confirmed and reiterated in her forthcoming expert validity report, which is due on June 15, 2025.

By contrast, Lumicore's technical expert, Dr. Rajesh Sundaram of Pacific Western University, proposed a materially broader POSITA definition in his declaration submitted in support of Lumicore's Responsive Claim Construction Brief, filed on December 6, 2024. Dr. Sundaram defined the POSITA as a person with a bachelor's degree in electrical engineering, materials science, or physics, with at least two years of experience in "photonic device design or optical communications systems." OWS disputes Dr. Sundaram's definition as improperly broadened. By lowering the threshold of education and experience, Lumicore seeks to expand the universe of knowledge that would be attributed to a POSITA, thereby making it easier to argue that the claimed inventions would have been obvious. However, the Asserted Patents are directed to highly specialized innovations in silicon-photonic integrated circuit design — a field that demands graduate-level training and substantial hands-on experience — and Dr. Sundaram's broader definition does not accurately reflect the qualifications of a person of ordinary skill in this particular art. We anticipate that this dispute will be resolved at the Markman hearing and, if necessary, at trial, and we are prepared to address it in both venues.

III. Commercial Success

A. Overview of OWS Products Practicing the Asserted Patents

OWS is a practicing entity that designs, manufactures (through foundry partners), and commercially sells silicon-photonic transceiver modules for hyperscale data-center and telecommunications applications. OWS operates under a fabless semiconductor model, with its design, engineering, and sales operations headquartered in Santa Clara, California, and its fabrication performed through foundry partnerships with leading semiconductor manufacturers. OWS has identified three principal product families that embody the inventions claimed in one or more of the four Asserted Patents:

OWS-400ZR Transceiver Module. The OWS-400ZR is OWS's 400-gigabit coherent optical transceiver module, designed for data-center interconnect ("DCI") applications. The OWS-400ZR practices claims of three of the four Asserted Patents: (i) the '847 Patent (U.S. 10,234,847), which claims the multi-channel silicon photonic waveguide multiplexer with low insertion loss that is a core component of the OWS-400ZR's wavelength-division multiplexing architecture; (ii) the '193 Patent (U.S. 10,891,193), which claims the high-bandwidth coherent optical transceiver architecture integrated on a silicon substrate that defines the OWS-400ZR's fundamental transceiver design; and (iii) the '562 Patent (U.S. 9,678,562), which claims the method for thermal management of photonic integrated circuits using embedded micro-channel heat sinks that enables the OWS-400ZR to operate within specified thermal limits at the power densities required for 400-gigabit coherent operation.

OWS-800XR Transceiver Module. The OWS-800XR is OWS's next-generation 800-gigabit transceiver module, launched in 2023 and designed for both DCI and intra-data-center applications at higher bandwidth. The OWS-800XR practices claims of all four Asserted Patents, including — in addition to the three patents practiced by the OWS-400ZR — the '015 Patent (U.S. 11,402,015), which claims the polarization-diverse grating coupler that enables the OWS-800XR to achieve superior coupling efficiency for both TE and TM polarization states. The OWS-800XR represents the most comprehensive embodiment of OWS's patented technology platform across the Asserted Patents.

OWS-1600DR Transceiver Module. The OWS-1600DR is OWS's highest-bandwidth transceiver module, designed for 1.6-terabit applications in next-generation data-center architectures. The OWS-1600DR practices claims of the '193 Patent (coherent transceiver architecture) and the '015 Patent (polarization-diverse grating coupler). This product represents the latest generation of OWS's product lineup and is emblematic of OWS's continued investment in and reliance on its patented technology platform.

It is significant that OWS is a practicing entity — not a non-practicing entity or patent assertion entity — that develops, manufactures, and sells these products in the commercial marketplace in direct competition with Lumicore's accused products. This fact strengthens the nexus between the Asserted Patents and the commercial success of OWS's products, as the products embody the claimed inventions and compete on the basis of the technological advantages those inventions provide.

B. Revenue Data

OWS's audited financial statements for fiscal year 2023, prepared by its independent auditors Gresham & Whitfield LLP, reflect total revenue of $487.3 million and net income of $61.4 million. These figures have been produced in discovery and are available for use in expert reports and at trial.

Of the $487.3 million in total revenue, approximately $310 million — or approximately 63.6% of OWS's total revenue — is attributable to the three product families that practice one or more of the four Asserted Patents: the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver modules. This revenue figure was derived from OWS's internal financial records and product-line revenue breakdowns produced in discovery, and it reflects the dominant contribution of the patent-practicing products to OWS's overall business.

The gross margin on the specific products that directly compete with Lumicore's accused products is 47.3%, as reflected in OWS's internal financial records produced in discovery. This healthy gross margin is indicative of a market in which customers are willing to pay a premium for the performance advantages enabled by the patented technology, rather than selecting products solely on the basis of price. The margin data will be incorporated into the damages analysis being prepared by Dr. Lawrence Keating of Meridian Economic Consulting Group, LLC, and should also be referenced in Dr. Ashford's discussion of commercial success in her validity report.

OWS's revenue growth trajectory further underscores the commercial success of its patent-practicing products. OWS was founded in 2011 and has grown from a startup to the third-largest U.S. supplier of silicon-photonics transceiver modules for hyperscale data centers, with a broad intellectual property portfolio comprising 142 issued U.S. patents and 58 pending patent applications. This growth has been driven in substantial part by the technological advantages conferred by the Asserted Patents and the broader patent portfolio of which they are a part.

The valuation placed on OWS by sophisticated investors further corroborates the commercial significance of its patented technology. In 2019, Ridgeline Capital Partners, LP — a private equity firm managed by Managing Partner Franklin Osei — acquired a 55% equity stake in OWS in a transaction valued at $780 million. While the acquisition valuation reflected multiple factors, including OWS's customer relationships, engineering talent, and growth prospects, a substantial portion of the valuation was attributable to OWS's patent-protected technology platform, as reflected in the due diligence materials and the intangible asset valuation performed in connection with the acquisition. This evidence is probative of the commercial significance of the patented innovations.

C. Market Position

OWS occupies a significant position in the silicon-photonics transceiver market, ranking as the third-largest U.S. supplier of silicon-photonics transceiver modules for hyperscale data centers. With approximately 1,250 employees, OWS has built a substantial commercial enterprise on the foundation of its patented technology. OWS's market position is driven by the technical performance of its products — particularly the low insertion loss enabled by the '847 Patent's waveguide multiplexer technology, the coherent transceiver integration enabled by the '193 Patent's architecture, the thermal management capabilities enabled by the '562 Patent's micro-channel heat-sink approach, and the coupling efficiency enabled by the '015 Patent's polarization-diverse grating coupler.

The market recognition that OWS has achieved is not the result of brand marketing or pricing advantages alone. Rather, it is driven by the measurable technical specifications of OWS's products — specifications that are directly enabled by the patented inventions. Data-center operators selecting optical transceiver modules evaluate products on the basis of insertion loss, power consumption, thermal performance, form factor, and data rate — all of which are directly affected by the technologies claimed in the Asserted Patents.

D. Nexus Between Patents and Commercial Success

Establishing a nexus between the Asserted Patents and the commercial success of OWS's products is essential to the probative value of the commercial success evidence. As set forth below, the evidence demonstrates a strong nexus, and in many instances the products are substantially coextensive with the claimed inventions, giving rise to a rebuttable presumption of nexus.

'847 Patent — Waveguide Multiplexer. The waveguide multiplexer structure claimed in the '847 Patent is a core component of the OWS-400ZR and OWS-800XR transceiver modules. The '847 Patent's claimed multi-channel waveguide multiplexer enables the low insertion loss that differentiates OWS's products from competitors' offerings. In the dense WDM market, insertion loss is a critical performance parameter, and customers select products in significant part on the basis of this metric. The OWS-400ZR's market-leading insertion-loss specifications are directly attributable to the waveguide multiplexer technology claimed in the '847 Patent, establishing a strong nexus between the patent and the product's commercial success.

'193 Patent — Coherent Transceiver Architecture. The coherent optical transceiver architecture claimed in the '193 Patent defines the fundamental design of the OWS-400ZR and OWS-800XR products and is also a core component of the OWS-1600DR. The '193 Patent claims the specific integration of high-bandwidth coherent transceiver functionality on a single silicon substrate — the very architecture that makes these products commercially viable. Without the integration approach claimed in the '193 Patent, the OWS products would require a fundamentally different — and less commercially attractive — design. The '193 Patent is therefore the core revenue driver among the Asserted Patents, and its claims are directed to the central functional architecture of OWS's most commercially successful products.

'562 Patent — Micro-Channel Thermal Management. The micro-channel thermal management approach claimed in the '562 Patent solves a critical bottleneck in photonic integrated circuit reliability that limited the performance and commercial viability of prior-generation transceiver modules. The '562 Patent, originally assigned to Solara Optics, Inc. and acquired by OWS via an asset purchase agreement dated June 15, 2018, for $34.5 million as part of a 12-patent portfolio, claims a specific method for thermal management using embedded micro-channel heat sinks with hydraulic diameters of less than one millimeter. The OWS-400ZR and OWS-800XR incorporate this technology to maintain thermal performance within specifications at the high power densities required for coherent operation. The fact that OWS invested $34.5 million to acquire this patent portfolio underscores the commercial significance of the thermal management technology, and the successful commercial implementation of the '562 Patent's claimed approach in OWS's products further demonstrates nexus.

'015 Patent — Polarization-Diverse Grating Coupler. The polarization-diverse grating coupler claimed in the '015 Patent enables the OWS-800XR and OWS-1600DR to achieve superior coupling efficiency when interfacing with optical fibers. Efficient coupling of light from fiber to chip is a fundamental requirement for transceiver performance, and the '015 Patent's claimed approach reduces polarization-dependent loss — a parameter that directly affects signal quality and system margin. Customer data sheets and performance comparisons demonstrate that OWS's coupling efficiency specifications are a key factor in customer purchasing decisions.

Critically, customer demand for OWS's products is driven by the technical specifications enabled by the patented features, not by brand loyalty, marketing campaigns, or pricing advantages alone. This fact is demonstrated by the competitive dynamics between OWS and Lumicore in the relevant market. According to OWS's June 2024 market-share displacement analysis, OWS and Lumicore compete head-to-head at twelve of the top twenty hyperscale data-center operators. These operators conduct rigorous technical evaluations of competing transceiver modules, selecting products on the basis of measurable performance parameters. The fact that Lumicore has been able to displace OWS at certain accounts — using products that practice the very same patented technologies — further confirms that the patented features are the basis of competition in this market, not extraneous factors such as brand recognition or marketing.

E. Evidentiary Sources

The commercial success evidence is supported by the following sources, all of which are available for use in expert reports and at trial:

• OWS internal financial records produced in discovery, including product-line revenue breakdowns, gross margin analyses, and customer-specific sales data for the OWS-400ZR, OWS-800XR, and OWS-1600DR product families.

• Gresham & Whitfield LLP audited financial statements for fiscal year 2023, which provide independently verified revenue and net income figures.

• Deposition testimony of Dr. Jian-Wei Huang (OWS Chief Technology Officer; deposition taken November 5, 2024). Dr. Huang, who is a named inventor on the '847, '193, and '015 Patents, testified regarding the relationship between the patented features and the technical specifications of OWS's commercial products. Dr. Huang is expected to serve as a fact witness at trial and to testify regarding the nexus between the patented innovations and the commercial success of OWS's products.

• Industry analysis by Gregory Falk (OWS's designated industry expert; former Vice President of Engineering at Solara Optics, Inc.). Mr. Falk's expert report, due June 15, 2025, is expected to provide a detailed analysis of the commercial significance of each patented innovation within the silicon-photonics transceiver market, including market sizing, competitive dynamics, and the role of the patented technologies in driving customer purchasing decisions.

IV. Long-Felt but Unsolved Need

A. The Technical Problem Addressed by the Patented Inventions

Each of the four Asserted Patents addresses a specific, long-recognized technical problem in the field of silicon-photonic integrated circuits that had resisted solution despite sustained efforts by the industry. The following provides a detailed description of each technical problem and the manner in which the Asserted Patents resolved it.

'847 Patent (Waveguide Multiplexer). Prior to the filing of the '847 Patent on September 14, 2016, and its issuance on March 19, 2019, the silicon-photonics industry faced a persistent challenge in achieving low-insertion-loss waveguide multiplexing in dense wavelength-division multiplexing ("WDM") applications on silicon substrates. Dense WDM is a critical technology for high-bandwidth optical interconnects, as it allows multiple wavelength channels to be combined onto a single optical fiber, thereby multiplying the data capacity of each fiber link. However, the integration of dense WDM multiplexers on silicon photonic integrated circuits ("PICs") was hampered by the inherent limitations of silicon as a waveguide material at the relevant wavelengths. High insertion losses at each stage of the multiplexing process degraded signal integrity, reduced system margin, and limited the number of wavelength channels that could be practically multiplexed on a single silicon PIC. Industry participants and researchers recognized that overcoming this insertion-loss limitation was essential to enabling the next generation of high-bandwidth optical transceivers, but prior approaches — including conventional arrayed-waveguide-grating ("AWG") designs adapted from InP and silica platforms — failed to achieve satisfactory results on silicon. The '847 Patent's claimed multi-channel waveguide multiplexer structure provided a breakthrough by achieving insertion-loss levels that had previously been considered unattainable on a silicon platform.

'193 Patent (Coherent Transceiver). Before the filing of the '193 Patent on April 7, 2017 (claiming priority to Provisional Application No. 62/499,117), and its issuance on January 12, 2021, the industry had not successfully integrated a high-bandwidth coherent optical transceiver on a single silicon substrate at commercially viable power levels and form factors. coherent optical transceivers — which employ advanced modulation formats and digital signal processing to encode information on the amplitude, phase, and polarization of light — are essential for achieving the high data rates (400 gigabits per second and beyond) demanded by hyperscale data-center operators. However, the integration of all coherent transceiver functions — including modulation, detection, digital signal processing, and driver electronics — on a single silicon die presented formidable technical challenges. Multiple companies and research groups attempted hybrid approaches, bonding III-V semiconductor materials (such as InP) onto silicon substrates to provide the optical gain and modulation functions that silicon alone could not efficiently perform. These hybrid approaches, while scientifically interesting, suffered from inferior performance, increased manufacturing costs, and reduced fabrication yields that rendered them commercially impractical. The '193 Patent's claimed architecture achieved the integration of a full coherent transceiver on a silicon substrate at power levels and form factors suitable for commercial deployment, resolving a need that had been felt acutely throughout the industry.

'562 Patent (Micro-Channel Thermal Management). Prior to the filing of the '562 Patent on November 22, 2014, and its issuance on June 13, 2017 (originally assigned to Solara Optics, Inc.), thermal management of photonic integrated circuits remained a persistent and critical bottleneck. As data rates and integration densities increased, the power dissipation of transceiver modules rose correspondingly, creating thermal challenges that conventional heat-sink approaches were unable to adequately address. The power densities of next-generation transceiver modules exceeded the capabilities of standard fin-based and heat-spreader-based thermal solutions, leading to junction temperatures that exceeded safe operating limits and resulted in reduced reliability, shortened component lifetimes, and performance degradation. The '562 Patent's claimed method for thermal management — utilizing embedded micro-channel heat sinks with hydraulic diameters of less than one millimeter, fabricated directly into or adjacent to the photonic integrated circuit — provided a breakthrough in thermal dissipation capability. By creating a network of micro-channels through which a coolant fluid could flow in close proximity to the heat-generating components of the PIC, the '562 Patent's approach achieved heat-transfer coefficients far exceeding those of conventional approaches, enabling reliable operation at the elevated power densities required by next-generation transceiver modules.

'015 Patent (Grating Coupler). Before the filing of the '015 Patent on August 30, 2019, and its issuance on August 2, 2022, efficiently coupling light of two orthogonal polarization states into silicon photonic transceivers remained an unsolved challenge in the field. Optical fibers used in data-center interconnects carry light in two polarization states — transverse electric ("TE") and transverse magnetic ("TM") — and an ideal transceiver must be able to efficiently couple both polarization states from the fiber into the on-chip waveguides. Existing grating coupler designs, which use periodic structures on the chip surface to redirect light from a fiber into on-chip waveguides, suffered from significant polarization-dependent loss ("PDL"). This meant that one polarization state was coupled efficiently while the other was not, resulting in wasted optical power, reduced signal-to-noise ratio, and degraded system performance. The '015 Patent's claimed polarization-diverse grating coupler overcame this limitation by employing a novel grating structure that achieves substantially equal coupling efficiency for both TE and TM polarization states, enabling superior overall system performance.

B. Duration of the Need

The long-felt nature of each of these technical needs is well-documented in the technical literature and industry records, as described below.

The need for low-insertion-loss waveguide multiplexing in silicon photonics was recognized as early as 2010, when the hyperscale data-center buildout began to accelerate demand for higher-bandwidth optical interconnects. By 2010, it was clear that silicon photonics offered significant advantages over competing material platforms (such as InP and lithium niobate) in terms of manufacturing scalability, cost, and integration density, but the insertion-loss limitations of silicon-based waveguide multiplexers remained a critical unsolved problem. Over the six-year period between 2010 and the filing of the '847 Patent in September 2016, numerous research groups and commercial entities attempted to address this limitation without achieving the results claimed in the '847 Patent.

The thermal management challenge addressed by the '562 Patent was documented in the technical literature at least as early as 2011–2012. A particularly notable reference is Dr. Li Wei's March 2013 conference paper presented at the Optical Fiber Communication Conference ("OFC"), entitled "Thermal Solutions for PICs," which Lumicore itself cites as prior art for the '562 Patent. Significantly, Dr. Li Wei's paper identified the thermal management problem in detail and discussed several general approaches to addressing it, but it did not provide the specific micro-channel heat-sink solution claimed in the '562 Patent. The paper's acknowledgment of the problem — without providing the claimed solution — is itself evidence of long-felt but unsolved need. The three-year gap between Dr. Li Wei's identification of the problem in 2013 and the '562 Patent's filing date of November 22, 2014 (and the even longer gap from the earliest recognition of the problem in 2011–2012) demonstrates that the need was both long-felt and persistent.

The need for coherent transceiver integration on a silicon substrate grew rapidly from approximately 2014–2015, as hyperscale data-center operators began to demand 400G+ data rates for their optical interconnects. At these higher data rates, direct-detection modulation schemes — which had been adequate for lower-speed applications — became insufficient, and coherent detection became necessary. The industry's inability to achieve commercially viable coherent transceiver integration on silicon, despite multiple well-funded attempts by major semiconductor companies and research institutions, persisted for approximately two to three years before the '193 Patent's approach provided a solution.

The polarization coupling challenge addressed by the '015 Patent was well-known in the photonics community by 2016–2017. As coherent transceiver designs moved to 800G and beyond, the need for polarization-diverse coupling became increasingly acute, and the inability of existing grating coupler designs to achieve adequate polarization-insensitive performance was widely recognized as a limiting factor. The approximately two-to-three-year gap between the recognition of this need and the filing of the '015 Patent in August 2019 is consistent with a long-felt but unsolved need, particularly given the intensity of research activity in this area during the intervening period.

C. Industry Acknowledgment

The unmet needs described above were widely acknowledged throughout the silicon-photonics industry during the relevant time periods. Technical publications, proceedings of leading conferences such as OFC and the IEEE International Conference on Group IV Photonics, and industry roadmaps published by organizations such as the Optical Internetworking Forum ("OIF") and the Consortium for On-Board Optics ("COBO") all documented these technical challenges and identified them as critical obstacles to the advancement of silicon-photonic transceiver technology.

Gregory Falk's anticipated expert report is expected to include specific citations to these industry roadmaps, conference proceedings, and published reports documenting the long-felt need for each of the patented technologies. Mr. Falk's extensive industry experience — including his tenure as Vice President of Engineering at Solara Optics, Inc. (the original assignee of the '562 Patent) and his subsequent consulting work for multiple silicon-photonics companies — positions him to provide authoritative and detailed testimony regarding the industry's recognition of these unmet needs and the significance of the solutions provided by the Asserted Patents.

In addition, depositions of Lumicore's technical personnel and additional discovery materials may yield further evidence corroborating the industry's long-felt need for the solutions provided by the Asserted Patents. To the extent that Lumicore's own internal technical assessments and product development roadmaps acknowledge the challenges addressed by OWS's patents, such documents would constitute particularly powerful evidence of long-felt need.

D. Nexus

The nexus between the Asserted Patents and the long-felt-need evidence is direct and strong. The claims of each Asserted Patent are directed to the specific solution to the corresponding long-felt need — not to the general concept of waveguide multiplexing, coherent transceivers, thermal management, or grating couplers in the abstract. For example, the '847 Patent does not merely claim "a waveguide multiplexer" in the most general sense; rather, it claims a specific multi-channel silicon photonic waveguide multiplexer structure with particular design features that enable the low insertion loss that the industry had long sought but had been unable to achieve. Similarly, the '562 Patent does not merely claim "thermal management" generically; it claims a specific method using embedded micro-channel heat sinks with defined hydraulic diameters, fabricated in a particular manner. This specificity of the claims, directed to the particular solutions that resolved the long-felt needs, establishes a strong nexus between the claimed inventions and the proffered evidence.

V. Failure of Others

A. Competitors Who Attempted Similar Solutions

Evidence of the failure of others to solve the technical problems addressed by the Asserted Patents provides further support for non-obviousness. If the claimed inventions were obvious, one would expect that other skilled practitioners in the field — facing the same problems and possessed of the same general knowledge — would have arrived at the same solutions. The fact that they did not, despite sustained efforts to do so, is strong evidence that the solutions were not obvious.

Based on the evidence developed to date, at least three competitors attempted to develop silicon-photonic solutions addressing the same technical problems prior to OWS's inventions but failed to achieve commercially viable results:

1. Competitor A (name to be identified in Gregory Falk's industry expert report). This competitor attempted to develop an arrayed-waveguide-grating ("AWG")-based multiplexer for dense WDM on silicon during the 2013–2015 time frame. Despite significant investment in research and development, this competitor was unable to achieve the low insertion-loss levels that the '847 Patent's claimed structure subsequently achieved. The competitor's AWG-based design suffered from fabrication-induced phase errors and excessive waveguide propagation losses that degraded multiplexer performance to levels unacceptable for commercial deployment. The product was abandoned before reaching commercial launch, and the competitor subsequently exited the dense WDM silicon photonics market. The failure of this competitor's approach — which represented a well-known and theoretically promising approach to waveguide multiplexing — demonstrates that the '847 Patent's claimed solution was not an obvious next step from the prior art.

2. Competitor B (name to be identified in Gregory Falk's industry expert report). This competitor developed a thermal management approach for photonic integrated circuits using conventional fin-based heat sinks during the 2012–2014 time frame. While the conventional fin-based approach provided adequate thermal performance for lower-power-density transceiver modules, it was unable to achieve adequate heat dissipation for the power densities exceeding 10 W/cm² that characterized next-generation transceiver modules. This thermal limitation prevented the competitor from commercializing its next-generation high-density transceiver modules and ultimately required the competitor to redesign its product lineup around lower-power-density architectures. The failure of this competitor's conventional approach confirms that the '562 Patent's micro-channel heat-sink solution was not an obvious extension of existing thermal management techniques.

3. Competitor C (name to be identified in Gregory Falk's industry expert report). This competitor attempted to integrate a coherent transceiver on a silicon platform during the 2015–2016 time frame. However, the competitor's approach required hybrid bonding of III-V semiconductor materials (such as InP) onto the silicon substrate to provide the optical gain and modulation functions necessary for coherent operation. This hybrid bonding approach significantly increased manufacturing costs, introduced yield-limiting defects at the bonding interfaces, and resulted in a product that was not commercially competitive with monolithically or near-monolithically integrated designs. The competitor's inability to achieve the level of integration contemplated by the '193 Patent's claims — without resorting to the costly and yield-limiting hybrid bonding approach — demonstrates that the '193 Patent's solution was not obvious to persons of ordinary skill in the art.

The specific identities and detailed technical and commercial histories of these competitors will be developed in Gregory Falk's expert report, which is due on June 15, 2025. Mr. Falk's extensive industry knowledge, drawn from his tenure as Vice President of Engineering at Solara Optics, Inc. and his subsequent consulting work with multiple silicon-photonics companies, positions him to provide authoritative testimony regarding the specific failures of these competitors and the technical reasons for those failures. We will coordinate closely with Mr. Falk in the coming months to ensure that his report identifies each competitor by name, provides detailed descriptions of their failed approaches, and explains why those approaches fell short of the solutions claimed in the Asserted Patents.

B. Lumicore's Argument and Rebuttal

Lumicore's invalidity contentions, served on October 14, 2024, cite twenty-three prior-art references in support of its challenges to the validity of the Asserted Patents under 35 U.S.C. §§ 102 and 103. Among the most prominent references cited by Lumicore are:

• Takahashi et al., "Dense WDM Silicon Photonic Multiplexer Using Cascaded Mach-Zehnder Interferometers," IEEE Photonics Technology Letters, Vol. 26, No. 5, pp. 473–476 (March 2014). Lumicore cites this reference for anticipation of the '847 Patent under § 102 and for obviousness of the '193 Patent under § 103.

• U.S. Patent No. 8,412,007 (Bergmann), "Thermal Management System for Optical Integrated Circuits," issued April 2, 2013. Lumicore cites this reference for obviousness of the '562 Patent under § 103.

• PCT/EP2015/071234 (Simonsen), "Silicon Photonic Waveguide Multiplexer with Reduced Crosstalk," filed September 17, 2015. Lumicore cites this reference for obviousness of the '847 Patent under § 103.

• Dr. Li Wei, "Thermal Solutions for PICs," Optical Fiber Communication Conference (OFC) (March 2013). Lumicore cites this conference paper for anticipation of the '562 Patent under § 102.

While these references are currently subject to detailed analysis in our separate invalidity memoranda for each Asserted Patent, it is significant for purposes of the secondary considerations analysis that these references collectively demonstrate awareness of the technical problems addressed by the Asserted Patents while simultaneously confirming that the art had not arrived at the specific claimed solutions.

Specifically, the Takahashi et al. article describes a dense WDM silicon photonic multiplexer using cascaded Mach-Zehnder interferometers, but it does not disclose the specific multi-channel waveguide multiplexer structure with low insertion loss as claimed in the '847 Patent. The Takahashi design achieves materially higher insertion losses than the '847 Patent's claimed structure, and it does not incorporate the specific structural features — including the particular waveguide geometry and coupling configuration — that enable the '847 Patent's breakthrough performance. The Bergmann patent ('007) addresses thermal management of optical integrated circuits but employs a fundamentally different cooling architecture — based on thermoelectric cooling elements rather than embedded micro-channel heat sinks — than the approach claimed in the '562 Patent. The Simonsen PCT application addresses waveguide multiplexing but does not achieve the specific combination of features claimed in the '847 Patent, including the claimed insertion-loss performance. And Dr. Li Wei's conference paper, while it identifies the thermal management problem and proposes general approaches, does not disclose the specific micro-channel heat-sink structure with embedded channels having hydraulic diameters of less than one millimeter that is claimed in the '562 Patent.

The existence of these prior-art references — which attempted to address the same problems but fell short of the specific claimed solutions — actually supports OWS's non-obviousness position rather than undermining it. These references confirm that skilled artisans were aware of the problems and were actively working to solve them, but the fact that their efforts did not produce the claimed solutions demonstrates that those solutions were not obvious. As the Federal Circuit has recognized, the existence of unsuccessful prior-art approaches to the same problem is itself evidence of non-obviousness. See Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1377 (Fed. Cir. 2012).

C. Nexus

The nexus between the failure-of-others evidence and the Asserted Patents is straightforward. Each of the failed approaches described above — the AWG-based multiplexer, the conventional fin-based thermal management, and the hybrid bonding coherent transceiver — attempted to solve the very same technical problems that the Asserted Patents address. The claimed inventions represent the specific solutions to these problems, and the failure of others to arrive at these solutions confirms that they were not obvious. The nexus is established by the identity of the problem being solved: the competitors were working in the same field, addressing the same needs, and applying the same general body of prior-art knowledge as the inventors of the Asserted Patents. Their failure to achieve the claimed results, despite these shared starting conditions, is compelling evidence that the claimed inventions were not obvious.

VI. Copying by Lumicore Technologies, Inc.

A. Overview of Copying Evidence

Evidence of deliberate copying by the accused infringer is among the most persuasive categories of secondary considerations, as it reflects a real-world judgment by the infringer that the patented invention represents a superior solution — one worth adopting rather than designing around. As the Federal Circuit has explained, "[o]ne of the strongest rationales underlying the secondary consideration of 'copying' is that one would not copy what one would find obvious to design around." Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004).

In this case, the evidence of copying by Lumicore Technologies, Inc. is the strongest category of secondary considerations evidence. The evidence, compiled from multiple independent sources — including admissions by Lumicore's own Chief Technology Officer, anticipated testimony from a former Lumicore engineer, independent product teardown analyses, and Lumicore's continued launch of new accused products after receiving actual notice of OWS's patents — demonstrates that Lumicore deliberately studied OWS's patented technology and adopted it in the design of its accused products. The evidence is particularly compelling because it is not limited to circumstantial inferences from structural similarity alone; rather, it includes direct evidence of Lumicore's awareness of and reliance on OWS's patent publications during the product design phase.

B. Lumicore's Review of OWS Patent Publications During Design Phase

1. Melissa Chen Anticipated Testimony

Melissa Chen is a former Lumicore engineer who was a member of the LumiLink 400G-ZR+ design team at Lumicore from 2020 to 2024. Ms. Chen left Lumicore in early 2024 and is now employed as a senior design engineer at Veridian Photonics, Inc. Because Ms. Chen is no longer a Lumicore employee, she is beyond OWS's ability to obtain her testimony through party discovery, and a third-party subpoena was required.

On January 22, 2025, a subpoena duces tecum and deposition notice were issued to Melissa Chen, seeking documents in her possession, custody, or control relating to her work at Lumicore on the LumiLink 400G-ZR+ design team, as well as testimony regarding her knowledge of OWS patent awareness within Lumicore's engineering organization. The subpoena was served at Ms. Chen's current employer, Veridian Photonics, Inc.

Based on pre-deposition outreach conducted by our team, Ms. Chen is expected to testify that Lumicore's LumiLink 400G-ZR+ design team accessed and reviewed OWS's published patent applications during the product design phase in 2021–2022. Specifically, Ms. Chen is expected to confirm that Lumicore engineers reviewed Published Application No. 2018/0123456 — which corresponds to the '193 Patent (U.S. 10,891,193) — as a technical reference during the design of the LumiLink 400G-ZR+ transceiver module. The LumiLink 400G-ZR+ was subsequently launched commercially by Lumicore in Q3 2022.

Ms. Chen's anticipated testimony is significant because it provides direct evidence — from a member of the accused product's design team — that Lumicore's engineers were aware of OWS's patented technology and used OWS's published applications as a reference during the design process. When combined with the structural similarity between the accused products and OWS's patented designs (as confirmed by the Benchmark teardown analyses), this testimony supports a strong inference of deliberate copying.

We anticipate that Ms. Chen's deposition will be scheduled for February or March 2025, subject to coordination with Ms. Chen's counsel. We will provide a detailed deposition summary and assessment of her testimony following the deposition.

2. Dr. Sandra Michaud Deposition Testimony (November 19, 2024)

Dr. Sandra Michaud, Lumicore's Chief Technology Officer, was deposed on November 19, 2024. During her deposition, Dr. Michaud made several admissions that are highly relevant to the copying analysis.

First, Dr. Michaud admitted that she personally reviewed OWS's Published Application No. 2018/0123456 — corresponding to the '193 Patent — during the LumiLink 400G-ZR+ design phase. While Dr. Michaud attempted to characterize her review as routine competitive monitoring, her admission establishes that Lumicore's most senior technical officer was personally aware of OWS's published patent application and its technical disclosures during the period when Lumicore was designing its directly competing product.

Second, Dr. Michaud denied knowledge of OWS's issued patents until Lumicore received FairPoint Licensing Group's first licensing letter on January 15, 2023. This denial is of limited probative value given that Published Application No. 2018/0123456 discloses substantially the same technical content as the issued '193 Patent. Moreover, the distinction between awareness of the published application (admitted) and awareness of the issued patent (denied) is not material to the copying analysis, which focuses on whether the infringer adopted the patented technology — regardless of whether it was aware that a patent had actually issued.

Third, and significantly, Dr. Michaud was unable to identify any specific non-infringing design alternatives that Lumicore considered or could have adopted in lieu of the approach ultimately used in the LumiLink 400G-ZR+. When questioned about whether Lumicore's engineers evaluated alternative coherent transceiver architectures, alternative waveguide multiplexer designs, or alternative thermal management approaches, Dr. Michaud either could not recall such evaluations or stated that they were not performed. This inability to identify non-infringing alternatives further supports the inference that Lumicore's design choices were not independent innovations but were instead informed by — and copied from — OWS's patented approach.

A detailed internal deposition summary for Dr. Michaud was circulated on November 22, 2024, and should be consulted for the full text of the relevant testimony and related exhibits.

C. Structural and Functional Similarity of Accused Products

Independent of the direct evidence of copying provided by the Michaud deposition and the anticipated Chen testimony, the structural and functional similarity between Lumicore's accused products and OWS's patented designs provides additional, corroborating evidence of copying.

Benchmark Semiconductor Analysis, LLC — a well-recognized semiconductor reverse-engineering firm led by Kevin Ng and headquartered at 2244 Mission College Boulevard, Santa Clara, CA 95054 — performed detailed teardown analyses of all three of Lumicore's accused products:

• LumiLink 400G-ZR+: Benchmark's teardown report, delivered on December 12, 2022, confirmed the presence of waveguide multiplexer structures and thermal management micro-channels in the LumiLink 400G-ZR+ that are consistent with the designs claimed in OWS's '847 and '562 Patents. The report also identified the coherent transceiver architecture of the LumiLink 400G-ZR+ as consistent with the approach claimed in OWS's '193 Patent.

• LumiLink 800G-DR8: Benchmark completed its follow-on teardown of the LumiLink 800G-DR8 in June 2023. This analysis confirmed that the LumiLink 800G-DR8, like the LumiLink 400G-ZR+, incorporates waveguide multiplexer structures, coherent transceiver architecture, and micro-channel thermal management features consistent with the '847, '193, and '562 Patents. The analysis further identified a polarization-diverse grating coupler structure consistent with the '015 Patent's claims.

• LumiEdge 1600G-LR: Benchmark completed its teardown of the LumiEdge 1600G-LR in February 2024. This analysis confirmed the presence of coherent transceiver architecture consistent with the '193 Patent and a polarization-diverse grating coupler consistent with the '015 Patent.

Kevin Ng, the lead engineer for all three teardown analyses, was deposed on January 7, 2025. During his deposition, Mr. Ng confirmed the methodology employed in each teardown, the chain of custody for the accused product samples, and the specific structures identified in each accused product that correspond to each asserted claim limitation. Mr. Ng's testimony provides a solid evidentiary foundation for the Benchmark teardown reports and will support their admissibility at trial.

The close structural correspondence between Lumicore's accused products and OWS's patented designs — examined in combination with the evidence that Lumicore's engineers studied OWS's published patent applications during the design phase of the first accused product — supports a strong inference of deliberate copying. The structural similarity is not limited to general design principles or high-level architectural choices; rather, it extends to specific structural features that correspond to specific claim limitations of the Asserted Patents. This level of correspondence is inconsistent with independent development and is instead indicative of a design process that was directly informed by OWS's patented technology.

D. Post-Notice Continuation of Accused Conduct

The evidence of copying is further strengthened by Lumicore's continued and expanded use of OWS's patented technology even after receiving actual notice of OWS's patent rights. This post-notice continuation of accused conduct demonstrates both deliberate copying and an indifference to OWS's patent rights that is relevant to the willfulness analysis as well.

FairPoint Licensing Group, LLC — OWS's licensing agent (Managing Director: Angela Reeves; located at 500 Sansome Street, Suite 1400, San Francisco, CA 94111) — sent two notice and licensing letters to Lumicore:

• First Letter (January 15, 2023): Addressed to Raymond Bautista, Lumicore's General Counsel, this letter identified the '847, '193, and '562 Patents, provided copies of the issued patents, identified specific Lumicore products believed to infringe (LumiLink 400G-ZR+), and invited Lumicore to enter into licensing discussions.

• Second Letter (May 15, 2023): This follow-up letter, also addressed to Raymond Bautista, added the '015 Patent (which had been issued on August 2, 2022, after the first notice letter) and expanded the list of accused products to include the LumiLink 800G-DR8, which had been identified through Benchmark's June 2023 teardown as incorporating additional patented features.

An in-person licensing meeting was held on April 20, 2023, in Austin, Texas. The meeting was attended by Angela Reeves and Rebecca Tanaka (OWS General Counsel) on

MEMORANDUM
PRIVILEGED AND CONFIDENTIAL — ATTORNEY WORK PRODUCT
TO: Alan Ngo, Responsible Partner; Marcus Delgado, Billing Partner
FROM: Wendy Schultz, Lead Associate; Omar Siddiqui, Working Associate
DATE: December 2024
RE: Secondary Considerations of Non-Obviousness — Evidence Compilation and Analysis, Optiwave Semiconductor Corp. v. Lumicore Technologies, Inc., Case No. 2:24-cv-00319-JRG (E.D. Tex.)
CLIENT: Optiwave Semiconductor Corp. ("OWS" or "Optiwave")
MATTER: Patent Infringement Litigation — 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")
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I. Purpose and Executive Summary
The purpose of this memorandum is to compile and assess the evidence supporting secondary considerations of non-obviousness — also referred to as "objective indicia" of non-obviousness — for each of the four Asserted Patents in the above-referenced litigation. This memorandum is prepared in anticipation of three critical milestones in this case: (a) Dr. Caroline Ashford's expert validity report, which is due on June 15, 2025, pursuant to the Court's Docket Control Order; (b) rebuttal of Lumicore Technologies, Inc.'s ("Lumicore") invalidity contentions, which were served on October 14, 2024, and which cite a total of twenty-three prior-art references across the four Asserted Patents in support of challenges under 35 U.S.C. §§ 102 and 103; and (c) potential summary judgment motions on the issue of validity, which we anticipate Lumicore may file following the close of expert discovery.
This memorandum organizes the available evidence under the four principal categories of secondary considerations recognized by the Supreme Court in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), and extensively developed by the United States Court of Appeals for the Federal Circuit: (1) commercial success of products embodying the patented inventions; (2) long-felt but unsolved need in the relevant field for the solutions provided by the patented inventions; (3) failure of others in the art to achieve the results accomplished by the claimed inventions; and (4) copying of the patented inventions by the accused infringer, Lumicore Technologies, Inc.
Under Graham v. John Deere, secondary considerations are relevant to and must be considered as part of the obviousness inquiry under 35 U.S.C. § 103. The Federal Circuit has consistently held that these objective indicia serve as a critical check against the hindsight bias that inevitably pervades any after-the-fact analysis of whether an invention would have been obvious at the time it was made. The legal standard requires that the party asserting non-obviousness demonstrate a nexus between the claimed invention and the proffered secondary consideration evidence. A rebuttable presumption of nexus arises when the patentee's commercial product is coextensive with — or embodies — the claimed invention. As demonstrated herein, OWS's commercial products are substantially coextensive with the claims of the Asserted Patents, and the evidence of nexus is strong.
Based on our comprehensive review of the evidence developed to date — including internal OWS financial records, audited financial statements, deposition testimony of key fact witnesses from both OWS and Lumicore, product teardown analyses performed by Benchmark Semiconductor Analysis, LLC, licensing correspondence between FairPoint Licensing Group, LLC and Lumicore, and pre-deposition outreach to former Lumicore engineer Melissa Chen — we conclude that strong evidence exists across all four categories of secondary considerations, particularly commercial success and copying. This evidence will substantially bolster OWS's non-obviousness position with respect to all four Asserted Patents in the face of Lumicore's § 103 challenges. Copying evidence is especially compelling in this case, as it is supported by admissions from Lumicore's own Chief Technology Officer, anticipated corroborating testimony from a former Lumicore engineer, independent teardown analysis confirming structural similarity between accused and patented products, and Lumicore's continued launch of new accused products after receiving actual notice of OWS's patent rights.
II. Legal Framework
A. Standard for Secondary Considerations
The Supreme Court established the foundational framework for evaluating obviousness under 35 U.S.C. § 103 in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966). Under Graham, the obviousness determination involves a four-step inquiry: (1) determining the scope and content of the prior art; (2) ascertaining the differences between the prior art and the claims at issue; (3) resolving the level of ordinary skill in the pertinent art; and (4) evaluating objective indicia of non-obviousness, commonly referred to as "secondary considerations." Id. at 17–18. Although these factors are sometimes labeled "secondary," the Supreme Court and the Federal Circuit have consistently emphasized that they are an integral part of the obviousness analysis and must be considered whenever presented.
The Federal Circuit has repeatedly held that secondary considerations evidence is "not just a cumulative or confirmatory part of the obviousness calculus" but rather constitutes an independent and potentially dispositive component of the analysis. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012). In Transocean, the Federal Circuit reversed a district court's finding of obviousness, holding that the lower court had improperly discounted evidence of secondary considerations. The court emphasized that such evidence "may often be the most probative and cogent evidence in the record" and that it "may often establish that an invention appearing to have been obvious in light of the prior art was not." Id. (quoting Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983)).
Similarly, in Camberwell & Co. v. Quillon Corporation, 839 F.3d 1034, 1052–53 (Fed. Cir. 2016) (en banc), the Federal Circuit reaffirmed that secondary considerations must be considered and "can be the most probative evidence of non-obviousness in the record." The court held that a reasonable jury could rely on strong evidence of copying and commercial success to conclude that the claimed invention was non-obvious, even where a prima facie case of obviousness based on prior art references appeared strong. This holding underscores the importance of developing and presenting comprehensive secondary considerations evidence at trial.
A critical requirement for the admissibility and probative value of secondary considerations evidence is the establishment of a nexus between the objective indicia and the merits of the claimed invention. Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). The nexus requirement ensures that the proffered evidence is attributable to the novelty of the claimed invention rather than to extraneous factors such as superior marketing, brand recognition, pricing strategies, or features of the product that are not encompassed by the patent claims. The burden of establishing nexus rests on the patent holder, though a rebuttable presumption of nexus arises when the patentee demonstrates that its commercially successful product "is the invention disclosed and claimed in the patent." Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000); see also Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988).
Once the presumption of nexus attaches, the burden shifts to the party challenging the patent to rebut the presumption by presenting evidence that the commercial success, or other secondary consideration, is attributable to factors other than the patented invention. J.T. Eaton & Co. v. Atl. Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997). As discussed in detail below, OWS's commercial products are substantially coextensive with the claims of the Asserted Patents, establishing a strong presumption of nexus that Lumicore will be hard-pressed to rebut.
B. Categories of Secondary Considerations
The four principal categories of secondary considerations that have been recognized by the Federal Circuit and are most directly applicable to this case are:
1. Commercial Success. Evidence that products embodying the claimed invention have achieved significant commercial success in the marketplace is probative of non-obviousness because it suggests that the marketplace values the innovation and that the invention filled a demand that the prior art had failed to address. See Ashbury Enterprises v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1376 (Fed. Cir. 2005). The commercial success analysis is particularly strong here given the substantial revenue attributable to OWS's patent-practicing products.
2. Long-Felt but Unsolved Need. Evidence that a long-felt need existed in the art for the solution provided by the claimed invention, and that the need went unsolved despite efforts by persons skilled in the art, is probative of non-obviousness because it indicates that the solution was not readily apparent to those working in the field. See Millennium Pharm., Inc. v. Sandoz Inc., 862 F.3d 1356, 1369 (Fed. Cir. 2017). Long-felt need evidence is especially powerful when it can be demonstrated that the need was widely recognized in the industry and that multiple skilled artisans attempted to address it without success.
3. Failure of Others. Evidence that others in the field attempted to solve the same problem addressed by the claimed invention but failed to do so is strongly probative of non-obviousness. See Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321 U.S. 275, 279 (1944). Failure of others evidence is closely related to long-felt need evidence but focuses on the specific unsuccessful attempts by competitors, which demonstrate that the solution was not obvious even to skilled practitioners in the field.
4. Copying by the Infringer. Evidence that the accused infringer deliberately copied the patented invention, rather than independently developing its own solution, is among the most persuasive forms of secondary considerations evidence. See Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004) ("Copying is additional evidence of non-obviousness, for it is reasonable to conclude that one would not copy what would be obvious to design around."). Copying evidence is particularly probative when it can be shown that the infringer was aware of the patented invention and adopted the specific claimed features into its own products.
Additional categories of secondary considerations have been recognized by the Federal Circuit, including industry praise for the invention, licensing of the patent by third parties, unexpected results achieved by the invention, and skepticism of experts in the field regarding the feasibility of the patented approach. See, e.g., Ruiz v. A.B. Chance Co., 234 F.3d 654, 668 (Fed. Cir. 2000). These additional categories may be addressed in supplemental memoranda as further discovery and expert work develop. In particular, evidence of industry praise and unexpected results may emerge from Gregory Falk's industry expert report (due June 15, 2025) and from additional technical publications and conference proceedings identified during the expert discovery phase.
C. Person of Ordinary Skill in the Art (POSITA)
The definition of a person of ordinary skill in the art ("POSITA") is a critical element of the obviousness analysis, as it establishes the baseline knowledge and capabilities against which the claimed inventions are measured. In this case, OWS's technical expert, Dr. Caroline Ashford — a tenured professor of electrical engineering and photonics at the Massachusetts Institute of Technology with over twenty years of experience in silicon photonic integrated circuit design — defined the POSITA in her November 15, 2024 declaration submitted in support of OWS's Opening Claim Construction Brief.
According to Dr. Ashford's declaration, a person of ordinary skill in the art at the time of the inventions claimed in the Asserted Patents would have possessed a Master of Science (M.S.) or Doctor of Philosophy (Ph.D.) degree in electrical engineering, photonics, or a closely related field, and would have had at least three years of experience in the design, fabrication, or characterization of silicon-photonic integrated circuits, including experience with waveguide design, optical transceiver architecture, and photonic integrated circuit packaging and thermal management. This definition reflects the advanced and specialized nature of the technology at issue in this case, which resides at the intersection of semiconductor fabrication, optical engineering, and high-speed data communications.
Dr. Ashford's POSITA definition is expected to be confirmed and reiterated in her forthcoming expert validity report, which is due on June 15, 2025.
By contrast, Lumicore's technical expert, Dr. Rajesh Sundaram of Pacific Western University, proposed a materially broader POSITA definition in his declaration submitted in support of Lumicore's Responsive Claim Construction Brief, filed on December 6, 2024. Dr. Sundaram defined the POSITA as a person with a bachelor's degree in electrical engineering, materials science, or physics, with at least two years of experience in "photonic device design or optical communications systems." OWS disputes Dr. Sundaram's definition as improperly broadened. By lowering the threshold of education and experience, Lumicore seeks to expand the universe of knowledge that would be attributed to a POSITA, thereby making it easier to argue that the claimed inventions would have been obvious. However, the Asserted Patents are directed to highly specialized innovations in silicon-photonic integrated circuit design — a field that demands graduate-level training and substantial hands-on experience — and Dr. Sundaram's broader definition does not accurately reflect the qualifications of a person of ordinary skill in this particular art. We anticipate that this dispute will be resolved at the Markman hearing and, if necessary, at trial, and we are prepared to address it in both venues.
III. Commercial Success
A. Overview of OWS Products Practicing the Asserted Patents
OWS is a practicing entity that designs, manufactures (through foundry partners), and commercially sells silicon-photonic transceiver modules for hyperscale data-center and telecommunications applications. OWS operates under a fabless semiconductor model, with its design, engineering, and sales operations headquartered in Santa Clara, California, and its fabrication performed through foundry partnerships with leading semiconductor manufacturers. OWS has identified three principal product families that embody the inventions claimed in one or more of the four Asserted Patents:
OWS-400ZR Transceiver Module. The OWS-400ZR is OWS's 400-gigabit coherent optical transceiver module, designed for data-center interconnect ("DCI") applications. The OWS-400ZR practices claims of three of the four Asserted Patents: (i) the '847 Patent (U.S. 10,234,847), which claims the multi-channel silicon photonic waveguide multiplexer with low insertion loss that is a core component of the OWS-400ZR's wavelength-division multiplexing architecture; (ii) the '193 Patent (U.S. 10,891,193), which claims the high-bandwidth coherent optical transceiver architecture integrated on a silicon substrate that defines the OWS-400ZR's fundamental transceiver design; and (iii) the '562 Patent (U.S. 9,678,562), which claims the method for thermal management of photonic integrated circuits using embedded micro-channel heat sinks that enables the OWS-400ZR to operate within specified thermal limits at the power densities required for 400-gigabit coherent operation.
OWS-800XR Transceiver Module. The OWS-800XR is OWS's next-generation 800-gigabit transceiver module, launched in 2023 and designed for both DCI and intra-data-center applications at higher bandwidth. The OWS-800XR practices claims of all four Asserted Patents, including — in addition to the three patents practiced by the OWS-400ZR — the '015 Patent (U.S. 11,402,015), which claims the polarization-diverse grating coupler that enables the OWS-800XR to achieve superior coupling efficiency for both TE and TM polarization states. The OWS-800XR represents the most comprehensive embodiment of OWS's patented technology platform across the Asserted Patents.
OWS-1600DR Transceiver Module. The OWS-1600DR is OWS's highest-bandwidth transceiver module, designed for 1.6-terabit applications in next-generation data-center architectures. The OWS-1600DR practices claims of the '193 Patent (coherent transceiver architecture) and the '015 Patent (polarization-diverse grating coupler). This product represents the latest generation of OWS's product lineup and is emblematic of OWS's continued investment in and reliance on its patented technology platform.
It is significant that OWS is a practicing entity — not a non-practicing entity or patent assertion entity — that develops, manufactures, and sells these products in the commercial marketplace in direct competition with Lumicore's accused products. This fact strengthens the nexus between the Asserted Patents and the commercial success of OWS's products, as the products embody the claimed inventions and compete on the basis of the technological advantages those inventions provide.
B. Revenue Data
OWS's audited financial statements for fiscal year 2023, prepared by its independent auditors Gresham & Whitfield LLP, reflect total revenue of $487.3 million and net income of $61.4 million. These figures have been produced in discovery and are available for use in expert reports and at trial.
Of the $487.3 million in total revenue, approximately $310 million — or approximately 63.6% of OWS's total revenue — is attributable to the three product families that practice one or more of the four Asserted Patents: the OWS-400ZR, OWS-800XR, and OWS-1600DR transceiver modules. This revenue figure was derived from OWS's internal financial records and product-line revenue breakdowns produced in discovery, and it reflects the dominant contribution of the patent-practicing products to OWS's overall business.
The gross margin on the specific products that directly compete with Lumicore's accused products is 47.3%, as reflected in OWS's internal financial records produced in discovery. This healthy gross margin is indicative of a market in which customers are willing to pay a premium for the performance advantages enabled by the patented technology, rather than selecting products solely on the basis of price. The margin data will be incorporated into the damages analysis being prepared by Dr. Lawrence Keating of Meridian Economic Consulting Group, LLC, and should also be referenced in Dr. Ashford's discussion of commercial success in her validity report.
OWS's revenue growth trajectory further underscores the commercial success of its patent-practicing products. OWS was founded in 2011 and has grown from a startup to the third-largest U.S. supplier of silicon-photonics transceiver modules for hyperscale data centers, with a broad intellectual property portfolio comprising 142 issued U.S. patents and 58 pending patent applications. This growth has been driven in substantial part by the technological advantages conferred by the Asserted Patents and the broader patent portfolio of which they are a part.
The valuation placed on OWS by sophisticated investors further corroborates the commercial significance of its patented technology. In 2019, Ridgeline Capital Partners, LP — a private equity firm managed by Managing Partner Franklin Osei — acquired a 55% equity stake in OWS in a transaction valued at $780 million. While the acquisition valuation reflected multiple factors, including OWS's customer relationships, engineering talent, and growth prospects, a substantial portion of the valuation was attributable to OWS's patent-protected technology platform, as reflected in the due diligence materials and the intangible asset valuation performed in connection with the acquisition. This evidence is probative of the commercial significance of the patented innovations.
C. Market Position
OWS occupies a significant position in the silicon-photonics transceiver market, ranking as the third-largest U.S. supplier of silicon-photonics transceiver modules for hyperscale data centers. With approximately 1,250 employees, OWS has built a substantial commercial enterprise on the foundation of its patented technology. OWS's market position is driven by the technical performance of its products — particularly the low insertion loss enabled by the '847 Patent's waveguide multiplexer technology, the coherent transceiver integration enabled by the '193 Patent's architecture, the thermal management capabilities enabled by the '562 Patent's micro-channel heat-sink approach, and the coupling efficiency enabled by the '015 Patent's polarization-diverse grating coupler.
The market recognition that OWS has achieved is not the result of brand marketing or pricing advantages alone. Rather, it is driven by the measurable technical specifications of OWS's products — specifications that are directly enabled by the patented inventions. Data-center operators selecting optical transceiver modules evaluate products on the basis of insertion loss, power consumption, thermal performance, form factor, and data rate — all of which are directly affected by the technologies claimed in the Asserted Patents.
D. Nexus Between Patents and Commercial Success
Establishing a nexus between the Asserted Patents and the commercial success of OWS's products is essential to the probative value of the commercial success evidence. As set forth below, the evidence demonstrates a strong nexus, and in many instances the products are substantially coextensive with the claimed inventions, giving rise to a rebuttable presumption of nexus.
'847 Patent — Waveguide Multiplexer. The waveguide multiplexer structure claimed in the '847 Patent is a core component of the OWS-400ZR and OWS-800XR transceiver modules. The '847 Patent's claimed multi-channel waveguide multiplexer enables the low insertion loss that differentiates OWS's products from competitors' offerings. In the dense WDM market, insertion loss is a critical performance parameter, and customers select products in significant part on the basis of this metric. The OWS-400ZR's market-leading insertion-loss specifications are directly attributable to the waveguide multiplexer technology claimed in the '847 Patent, establishing a strong nexus between the patent and the product's commercial success.
'193 Patent — Coherent Transceiver Architecture. The coherent optical transceiver architecture claimed in the '193 Patent defines the fundamental design of the OWS-400ZR and OWS-800XR products and is also a core component of the OWS-1600DR. The '193 Patent claims the specific integration of high-bandwidth coherent transceiver functionality on a single silicon substrate — the very architecture that makes these products commercially viable. Without the integration approach claimed in the '193 Patent, the OWS products would require a fundamentally different — and less commercially attractive — design. The '193 Patent is therefore the core revenue driver among the Asserted Patents, and its claims are directed to the central functional architecture of OWS's most commercially successful products.
'562 Patent — Micro-Channel Thermal Management. The micro-channel thermal management approach claimed in the '562 Patent solves a critical bottleneck in photonic integrated circuit reliability that limited the performance and commercial viability of prior-generation transceiver modules. The '562 Patent, originally assigned to Solara Optics, Inc. and acquired by OWS via an asset purchase agreement dated June 15, 2018, for $34.5 million as part of a 12-patent portfolio, claims a specific method for thermal management using embedded micro-channel heat sinks with hydraulic diameters of less than one millimeter. The OWS-400ZR and OWS-800XR incorporate this technology to maintain thermal performance within specifications at the high power densities required for coherent operation. The fact that OWS invested $34.5 million to acquire this patent portfolio underscores the commercial significance of the thermal management technology, and the successful commercial implementation of the '562 Patent's claimed approach in OWS's products further demonstrates nexus.
'015 Patent — Polarization-Diverse Grating Coupler. The polarization-diverse grating coupler claimed in the '015 Patent enables the OWS-800XR and OWS-1600DR to achieve superior coupling efficiency when interfacing with optical fibers. Efficient coupling of light from fiber to chip is a fundamental requirement for transceiver performance, and the '015 Patent's claimed approach reduces polarization-dependent loss — a parameter that directly affects signal quality and system margin. Customer data sheets and performance comparisons demonstrate that OWS's coupling efficiency specifications are a key factor in customer purchasing decisions.
Critically, customer demand for OWS's products is driven by the technical specifications enabled by the patented features, not by brand loyalty, marketing campaigns, or pricing advantages alone. This fact is demonstrated by the competitive dynamics between OWS and Lumicore in the relevant market. According to OWS's June 2024 market-share displacement analysis, OWS and Lumicore compete head-to-head at twelve of the top twenty hyperscale data-center operators. These operators conduct rigorous technical evaluations of competing transceiver modules, selecting products on the basis of measurable performance parameters. The fact that Lumicore has been able to displace OWS at certain accounts — using products that practice the very same patented technologies — further confirms that the patented features are the basis of competition in this market, not extraneous factors such as brand recognition or marketing.
E. Evidentiary Sources
The commercial success evidence is supported by the following sources, all of which are available for use in expert reports and at trial:
• OWS internal financial records produced in discovery, including product-line revenue breakdowns, gross margin analyses, and customer-specific sales data for the OWS-400ZR, OWS-800XR, and OWS-1600DR product families.
• Gresham & Whitfield LLP audited financial statements for fiscal year 2023, which provide independently verified revenue and net income figures.
• Deposition testimony of Dr. Jian-Wei Huang (OWS Chief Technology Officer; deposition taken November 5, 2024). Dr. Huang, who is a named inventor on the '847, '193, and '015 Patents, testified regarding the relationship between the patented features and the technical specifications of OWS's commercial products. Dr. Huang is expected to serve as a fact witness at trial and to testify regarding the nexus between the patented innovations and the commercial success of OWS's products.
• Industry analysis by Gregory Falk (OWS's designated industry expert; former Vice President of Engineering at Solara Optics, Inc.). Mr. Falk's expert report, due June 15, 2025, is expected to provide a detailed analysis of the commercial significance of each patented innovation within the silicon-photonics transceiver market, including market sizing, competitive dynamics, and the role of the patented technologies in driving customer purchasing decisions.
IV. Long-Felt but Unsolved Need
A. The Technical Problem Addressed by the Patented Inventions
Each of the four Asserted Patents addresses a specific, long-recognized technical problem in the field of silicon-photonic integrated circuits that had resisted solution despite sustained efforts by the industry. The following provides a detailed description of each technical problem and the manner in which the Asserted Patents resolved it.
'847 Patent (Waveguide Multiplexer). Prior to the filing of the '847 Patent on September 14, 2016, and its issuance on March 19, 2019, the silicon-photonics industry faced a persistent challenge in achieving low-insertion-loss waveguide multiplexing in dense wavelength-division multiplexing ("WDM") applications on silicon substrates. Dense WDM is a critical technology for high-bandwidth optical interconnects, as it allows multiple wavelength channels to be combined onto a single optical fiber, thereby multiplying the data capacity of each fiber link. However, the integration of dense WDM multiplexers on silicon photonic integrated circuits ("PICs") was hampered by the inherent limitations of silicon as a waveguide material at the relevant wavelengths. High insertion losses at each stage of the multiplexing process degraded signal integrity, reduced system margin, and limited the number of wavelength channels that could be practically multiplexed on a single silicon PIC. Industry participants and researchers recognized that overcoming this insertion-loss limitation was essential to enabling the next generation of high-bandwidth optical transceivers, but prior approaches — including conventional arrayed-waveguide-grating ("AWG") designs adapted from InP and silica platforms — failed to achieve satisfactory results on silicon. The '847 Patent's claimed multi-channel waveguide multiplexer structure provided a breakthrough by achieving insertion-loss levels that had previously been considered unattainable on a silicon platform.
'193 Patent (Coherent Transceiver). Before the filing of the '193 Patent on April 7, 2017 (claiming priority to Provisional Application No. 62/499,117), and its issuance on January 12, 2021, the industry had not successfully integrated a high-bandwidth coherent optical transceiver on a single silicon substrate at commercially viable power levels and form factors. coherent optical transceivers — which employ advanced modulation formats and digital signal processing to encode information on the amplitude, phase, and polarization of light — are essential for achieving the high data rates (400 gigabits per second and beyond) demanded by hyperscale data-center operators. However, the integration of all coherent transceiver functions — including modulation, detection, digital signal processing, and driver electronics — on a single silicon die presented formidable technical challenges. Multiple companies and research groups attempted hybrid approaches, bonding III-V semiconductor materials (such as InP) onto silicon substrates to provide the optical gain and modulation functions that silicon alone could not efficiently perform. These hybrid approaches, while scientifically interesting, suffered from inferior performance, increased manufacturing costs, and reduced fabrication yields that rendered them commercially impractical. The '193 Patent's claimed architecture achieved the integration of a full coherent transceiver on a silicon substrate at power levels and form factors suitable for commercial deployment, resolving a need that had been felt acutely throughout the industry.
'562 Patent (Micro-Channel Thermal Management). Prior to the filing of the '562 Patent on November 22, 2014, and its issuance on June 13, 2017 (originally assigned to Solara Optics, Inc.), thermal management of photonic integrated circuits remained a persistent and critical bottleneck. As data rates and integration densities increased, the power dissipation of transceiver modules rose correspondingly, creating thermal challenges that conventional heat-sink approaches were unable to adequately address. The power densities of next-generation transceiver modules exceeded the capabilities of standard fin-based and heat-spreader-based thermal solutions, leading to junction temperatures that exceeded safe operating limits and resulted in reduced reliability, shortened component lifetimes, and performance degradation. The '562 Patent's claimed method for thermal management — utilizing embedded micro-channel heat sinks with hydraulic diameters of less than one millimeter, fabricated directly into or adjacent to the photonic integrated circuit — provided a breakthrough in thermal dissipation capability. By creating a network of micro-channels through which a coolant fluid could flow in close proximity to the heat-generating components of the PIC, the '562 Patent's approach achieved heat-transfer coefficients far exceeding those of conventional approaches, enabling reliable operation at the elevated power densities required by next-generation transceiver modules.
'015 Patent (Grating Coupler). Before the filing of the '015 Patent on August 30, 2019, and its issuance on August 2, 2022, efficiently coupling light of two orthogonal polarization states into silicon photonic transceivers remained an unsolved challenge in the field. Optical fibers used in data-center interconnects carry light in two polarization states — transverse electric ("TE") and transverse magnetic ("TM") — and an ideal transceiver must be able to efficiently couple both polarization states from the fiber into the on-chip waveguides. Existing grating coupler designs, which use periodic structures on the chip surface to redirect light from a fiber into on-chip waveguides, suffered from significant polarization-dependent loss ("PDL"). This meant that one polarization state was coupled efficiently while the other was not, resulting in wasted optical power, reduced signal-to-noise ratio, and degraded system performance. The '015 Patent's claimed polarization-diverse grating coupler overcame this limitation by employing a novel grating structure that achieves substantially equal coupling efficiency for both TE and TM polarization states, enabling superior overall system performance.
B. Duration of the Need
The long-felt nature of each of these technical needs is well-documented in the technical literature and industry records, as described below.
The need for low-insertion-loss waveguide multiplexing in silicon photonics was recognized as early as 2010, when the hyperscale data-center buildout began to accelerate demand for higher-bandwidth optical interconnects. By 2010, it was clear that silicon photonics offered significant advantages over competing material platforms (such as InP and lithium niobate) in terms of manufacturing scalability, cost, and integration density, but the insertion-loss limitations of silicon-based waveguide multiplexers remained a critical unsolved problem. Over the six-year period between 2010 and the filing of the '847 Patent in September 2016, numerous research groups and commercial entities attempted to address this limitation without achieving the results claimed in the '847 Patent.
The thermal management challenge addressed by the '562 Patent was documented in the technical literature at least as early as 2011–2012. A particularly notable reference is Dr. Li Wei's March 2013 conference paper presented at the Optical Fiber Communication Conference ("OFC"), entitled "Thermal Solutions for PICs," which Lumicore itself cites as prior art for the '562 Patent. Significantly, Dr. Li Wei's paper identified the thermal management problem in detail and discussed several general approaches to addressing it, but it did not provide the specific micro-channel heat-sink solution claimed in the '562 Patent. The paper's acknowledgment of the problem — without providing the claimed solution — is itself evidence of long-felt but unsolved need. The three-year gap between Dr. Li Wei's identification of the problem in 2013 and the '562 Patent's filing date of November 22, 2014 (and the even longer gap from the earliest recognition of the problem in 2011–2012) demonstrates that the need was both long-felt and persistent.
The need for coherent transceiver integration on a silicon substrate grew rapidly from approximately 2014–2015, as hyperscale data-center operators began to demand 400G+ data rates for their optical interconnects. At these higher data rates, direct-detection modulation schemes — which had been adequate for lower-speed applications — became insufficient, and coherent detection became necessary. The industry's inability to achieve commercially viable coherent transceiver integration on silicon, despite multiple well-funded attempts by major semiconductor companies and research institutions, persisted for approximately two to three years before the '193 Patent's approach provided a solution.
The polarization coupling challenge addressed by the '015 Patent was well-known in the photonics community by 2016–2017. As coherent transceiver designs moved to 800G and beyond, the need for polarization-diverse coupling became increasingly acute, and the inability of existing grating coupler designs to achieve adequate polarization-insensitive performance was widely recognized as a limiting factor. The approximately two-to-three-year gap between the recognition of this need and the filing of the '015 Patent in August 2019 is consistent with a long-felt but unsolved need, particularly given the intensity of research activity in this area during the intervening period.
C. Industry Acknowledgment
The unmet needs described above were widely acknowledged throughout the silicon-photonics industry during the relevant time periods. Technical publications, proceedings of leading conferences such as OFC and the IEEE International Conference on Group IV Photonics, and industry roadmaps published by organizations such as the Optical Internetworking Forum ("OIF") and the Consortium for On-Board Optics ("COBO") all documented these technical challenges and identified them as critical obstacles to the advancement of silicon-photonic transceiver technology.
Gregory Falk's anticipated expert report is expected to include specific citations to these industry roadmaps, conference proceedings, and published reports documenting the long-felt need for each of the patented technologies. Mr. Falk's extensive industry experience — including his tenure as Vice President of Engineering at Solara Optics, Inc. (the original assignee of the '562 Patent) and his subsequent consulting work for multiple silicon-photonics companies — positions him to provide authoritative and detailed testimony regarding the industry's recognition of these unmet needs and the significance of the solutions provided by the Asserted Patents.
In addition, depositions of Lumicore's technical personnel and additional discovery materials may yield further evidence corroborating the industry's long-felt need for the solutions provided by the Asserted Patents. To the extent that Lumicore's own internal technical assessments and product development roadmaps acknowledge the challenges addressed by OWS's patents, such documents would constitute particularly powerful evidence of long-felt need.
D. Nexus
The nexus between the Asserted Patents and the long-felt-need evidence is direct and strong. The claims of each Asserted Patent are directed to the specific solution to the corresponding long-felt need — not to the general concept of waveguide multiplexing, coherent transceivers, thermal management, or grating couplers in the abstract. For example, the '847 Patent does not merely claim "a waveguide multiplexer" in the most general sense; rather, it claims a specific multi-channel silicon photonic waveguide multiplexer structure with particular design features that enable the low insertion loss that the industry had long sought but had been unable to achieve. Similarly, the '562 Patent does not merely claim "thermal management" generically; it claims a specific method using embedded micro-channel heat sinks with defined hydraulic diameters, fabricated in a particular manner. This specificity of the claims, directed to the particular solutions that resolved the long-felt needs, establishes a strong nexus between the claimed inventions and the proffered evidence.
V. Failure of Others
A. Competitors Who Attempted Similar Solutions
Evidence of the failure of others to solve the technical problems addressed by the Asserted Patents provides further support for non-obviousness. If the claimed inventions were obvious, one would expect that other skilled practitioners in the field — facing the same problems and possessed of the same general knowledge — would have arrived at the same solutions. The fact that they did not, despite sustained efforts to do so, is strong evidence that the solutions were not obvious.
Based on the evidence developed to date, at least three competitors attempted to develop silicon-photonic solutions addressing the same technical problems prior to OWS's inventions but failed to achieve commercially viable results:
1. Competitor A (name to be identified in Gregory Falk's industry expert report). This competitor attempted to develop an arrayed-waveguide-grating ("AWG")-based multiplexer for dense WDM on silicon during the 2013–2015 time frame. Despite significant investment in research and development, this competitor was unable to achieve the low insertion-loss levels that the '847 Patent's claimed structure subsequently achieved. The competitor's AWG-based design suffered from fabrication-induced phase errors and excessive waveguide propagation losses that degraded multiplexer performance to levels unacceptable for commercial deployment. The product was abandoned before reaching commercial launch, and the competitor subsequently exited the dense WDM silicon photonics market. The failure of this competitor's approach — which represented a well-known and theoretically promising approach to waveguide multiplexing — demonstrates that the '847 Patent's claimed solution was not an obvious next step from the prior art.
2. Competitor B (name to be identified in Gregory Falk's industry expert report). This competitor developed a thermal management approach for photonic integrated circuits using conventional fin-based heat sinks during the 2012–2014 time frame. While the conventional fin-based approach provided adequate thermal performance for lower-power-density transceiver modules, it was unable to achieve adequate heat dissipation for the power densities exceeding 10 W/cm² that characterized next-generation transceiver modules. This thermal limitation prevented the competitor from commercializing its next-generation high-density transceiver modules and ultimately required the competitor to redesign its product lineup around lower-power-density architectures. The failure of this competitor's conventional approach confirms that the '562 Patent's micro-channel heat-sink solution was not an obvious extension of existing thermal management techniques.
3. Competitor C (name to be identified in Gregory Falk's industry expert report). This competitor attempted to integrate a coherent transceiver on a silicon platform during the 2015–2016 time frame. However, the competitor's approach required hybrid bonding of III-V semiconductor materials (such as InP) onto the silicon substrate to provide the optical gain and modulation functions necessary for coherent operation. This hybrid bonding approach significantly increased manufacturing costs, introduced yield-limiting defects at the bonding interfaces, and resulted in a product that was not commercially competitive with monolithically or near-monolithically integrated designs. The competitor's inability to achieve the level of integration contemplated by the '193 Patent's claims — without resorting to the costly and yield-limiting hybrid bonding approach — demonstrates that the '193 Patent's solution was not obvious to persons of ordinary skill in the art.
The specific identities and detailed technical and commercial histories of these competitors will be developed in Gregory Falk's expert report, which is due on June 15, 2025. Mr. Falk's extensive industry knowledge, drawn from his tenure as Vice President of Engineering at Solara Optics, Inc. and his subsequent consulting work with multiple silicon-photonics companies, positions him to provide authoritative testimony regarding the specific failures of these competitors and the technical reasons for those failures. We will coordinate closely with Mr. Falk in the coming months to ensure that his report identifies each competitor by name, provides detailed descriptions of their failed approaches, and explains why those approaches fell short of the solutions claimed in the Asserted Patents.
B. Lumicore's Argument and Rebuttal
Lumicore's invalidity contentions, served on October 14, 2024, cite twenty-three prior-art references in support of its challenges to the validity of the Asserted Patents under 35 U.S.C. §§ 102 and 103. Among the most prominent references cited by Lumicore are:
• Takahashi et al., "Dense WDM Silicon Photonic Multiplexer Using Cascaded Mach-Zehnder Interferometers," IEEE Photonics Technology Letters, Vol. 26, No. 5, pp. 473–476 (March 2014). Lumicore cites this reference for anticipation of the '847 Patent under § 102 and for obviousness of the '193 Patent under § 103.
• U.S. Patent No. 8,412,007 (Bergmann), "Thermal Management System for Optical Integrated Circuits," issued April 2, 2013. Lumicore cites this reference for obviousness of the '562 Patent under § 103.
• PCT/EP2015/071234 (Simonsen), "Silicon Photonic Waveguide Multiplexer with Reduced Crosstalk," filed September 17, 2015. Lumicore cites this reference for obviousness of the '847 Patent under § 103.
• Dr. Li Wei, "Thermal Solutions for PICs," Optical Fiber Communication Conference (OFC) (March 2013). Lumicore cites this conference paper for anticipation of the '562 Patent under § 102.
While these references are currently subject to detailed analysis in our separate invalidity memoranda for each Asserted Patent, it is significant for purposes of the secondary considerations analysis that these references collectively demonstrate awareness of the technical problems addressed by the Asserted Patents while simultaneously confirming that the art had not arrived at the specific claimed solutions.
Specifically, the Takahashi et al. article describes a dense WDM silicon photonic multiplexer using cascaded Mach-Zehnder interferometers, but it does not disclose the specific multi-channel waveguide multiplexer structure with low insertion loss as claimed in the '847 Patent. The Takahashi design achieves materially higher insertion losses than the '847 Patent's claimed structure, and it does not incorporate the specific structural features — including the particular waveguide geometry and coupling configuration — that enable the '847 Patent's breakthrough performance. The Bergmann patent ('007) addresses thermal management of optical integrated circuits but employs a fundamentally different cooling architecture — based on thermoelectric cooling elements rather than embedded micro-channel heat sinks — than the approach claimed in the '562 Patent. The Simonsen PCT application addresses waveguide multiplexing but does not achieve the specific combination of features claimed in the '847 Patent, including the claimed insertion-loss performance. And Dr. Li Wei's conference paper, while it identifies the thermal management problem and proposes general approaches, does not disclose the specific micro-channel heat-sink structure with embedded channels having hydraulic diameters of less than one millimeter that is claimed in the '562 Patent.
The existence of these prior-art references — which attempted to address the same problems but fell short of the specific claimed solutions — actually supports OWS's non-obviousness position rather than undermining it. These references confirm that skilled artisans were aware of the problems and were actively working to solve them, but the fact that their efforts did not produce the claimed solutions demonstrates that those solutions were not obvious. As the Federal Circuit has recognized, the existence of unsuccessful prior-art approaches to the same problem is itself evidence of non-obviousness. See Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1377 (Fed. Cir. 2012).
C. Nexus
The nexus between the failure-of-others evidence and the Asserted Patents is straightforward. Each of the failed approaches described above — the AWG-based multiplexer, the conventional fin-based thermal management, and the hybrid bonding coherent transceiver — attempted to solve the very same technical problems that the Asserted Patents address. The claimed inventions represent the specific solutions to these problems, and the failure of others to arrive at these solutions confirms that they were not obvious. The nexus is established by the identity of the problem being solved: the competitors were working in the same field, addressing the same needs, and applying the same general body of prior-art knowledge as the inventors of the Asserted Patents. Their failure to achieve the claimed results, despite these shared starting conditions, is compelling evidence that the claimed inventions were not obvious.
VI. Copying by Lumicore Technologies, Inc.
A. Overview of Copying Evidence
Evidence of deliberate copying by the accused infringer is among the most persuasive categories of secondary considerations, as it reflects a real-world judgment by the infringer that the patented invention represents a superior solution — one worth adopting rather than designing around. As the Federal Circuit has explained, "[o]ne of the strongest rationales underlying the secondary consideration of 'copying' is that one would not copy what one would find obvious to design around." Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004).
In this case, the evidence of copying by Lumicore Technologies, Inc. is the strongest category of secondary considerations evidence. The evidence, compiled from multiple independent sources — including admissions by Lumicore's own Chief Technology Officer, anticipated testimony from a former Lumicore engineer, independent product teardown analyses, and Lumicore's continued launch of new accused products after receiving actual notice of OWS's patents — demonstrates that Lumicore deliberately studied OWS's patented technology and adopted it in the design of its accused products. The evidence is particularly compelling because it is not limited to circumstantial inferences from structural similarity alone; rather, it includes direct evidence of Lumicore's awareness of and reliance on OWS's patent publications during the product design phase.
B. Lumicore's Review of OWS Patent Publications During Design Phase
1. Melissa Chen Anticipated Testimony
Melissa Chen is a former Lumicore engineer who was a member of the LumiLink 400G-ZR+ design team at Lumicore from 2020 to 2024. Ms. Chen left Lumicore in early 2024 and is now employed as a senior design engineer at Veridian Photonics, Inc. Because Ms. Chen is no longer a Lumicore employee, she is beyond OWS's ability to obtain her testimony through party discovery, and a third-party subpoena was required.
On January 22, 2025, a subpoena duces tecum and deposition notice were issued to Melissa Chen, seeking documents in her possession, custody, or control relating to her work at Lumicore on the LumiLink 400G-ZR+ design team, as well as testimony regarding her knowledge of OWS patent awareness within Lumicore's engineering organization. The subpoena was served at Ms. Chen's current employer, Veridian Photonics, Inc.
Based on pre-deposition outreach conducted by our team, Ms. Chen is expected to testify that Lumicore's LumiLink 400G-ZR+ design team accessed and reviewed OWS's published patent applications during the product design phase in 2021–2022. Specifically, Ms. Chen is expected to confirm that Lumicore engineers reviewed Published Application No. 2018/0123456 — which corresponds to the '193 Patent (U.S. 10,891,193) — as a technical reference during the design of the LumiLink 400G-ZR+ transceiver module. The LumiLink 400G-ZR+ was subsequently launched commercially by Lumicore in Q3 2022.
Ms. Chen's anticipated testimony is significant because it provides direct evidence — from a member of the accused product's design team — that Lumicore's engineers were aware of OWS's patented technology and used OWS's published applications as a reference during the design process. When combined with the structural similarity between the accused products and OWS's patented designs (as confirmed by the Benchmark teardown analyses), this testimony supports a strong inference of deliberate copying.
We anticipate that Ms. Chen's deposition will be scheduled for February or March 2025, subject to coordination with Ms. Chen's counsel. We will provide a detailed deposition summary and assessment of her testimony following the deposition.
2. Dr. Sandra Michaud Deposition Testimony (November 19, 2024)
Dr. Sandra Michaud, Lumicore's Chief Technology Officer, was deposed on November 19, 2024. During her deposition, Dr. Michaud made several admissions that are highly relevant to the copying analysis.
First, Dr. Michaud admitted that she personally reviewed OWS's Published Application No. 2018/0123456 — corresponding to the '193 Patent — during the LumiLink 400G-ZR+ design phase. While Dr. Michaud attempted to characterize her review as routine competitive monitoring, her admission establishes that Lumicore's most senior technical officer was personally aware of OWS's published patent application and its technical disclosures during the period when Lumicore was designing its directly competing product.
Second, Dr. Michaud denied knowledge of OWS's issued patents until Lumicore received FairPoint Licensing Group's first licensing letter on January 15, 2023. This denial is of limited probative value given that Published Application No. 2018/0123456 discloses substantially the same technical content as the issued '193 Patent. Moreover, the distinction between awareness of the published application (admitted) and awareness of the issued patent (denied) is not material to the copying analysis, which focuses on whether the infringer adopted the patented technology — regardless of whether it was aware that a patent had actually issued.
Third, and significantly, Dr. Michaud was unable to identify any specific non-infringing design alternatives that Lumicore considered or could have adopted in lieu of the approach ultimately used in the LumiLink 400G-ZR+. When questioned about whether Lumicore's engineers evaluated alternative coherent transceiver architectures, alternative waveguide multiplexer designs, or alternative thermal management approaches, Dr. Michaud either could not recall such evaluations or stated that they were not performed. This inability to identify non-infringing alternatives further supports the inference that Lumicore's design choices were not independent innovations but were instead informed by — and copied from — OWS's patented approach.
A detailed internal deposition summary for Dr. Michaud was circulated on November 22, 2024, and should be consulted for the full text of the relevant testimony and related exhibits.
C. Structural and Functional Similarity of Accused Products
Independent of the direct evidence of copying provided by the Michaud deposition and the anticipated Chen testimony, the structural and functional similarity between Lumicore's accused products and OWS's patented designs provides additional, corroborating evidence of copying.
Benchmark Semiconductor Analysis, LLC — a well-recognized semiconductor reverse-engineering firm led by Kevin Ng and headquartered at 2244 Mission College Boulevard, Santa Clara, CA 95054 — performed detailed teardown analyses of all three of Lumicore's accused products:
• LumiLink 400G-ZR+: Benchmark's teardown report, delivered on December 12, 2022, confirmed the presence of waveguide multiplexer structures and thermal management micro-channels in the LumiLink 400G-ZR+ that are consistent with the designs claimed in OWS's '847 and '562 Patents. The report also identified the coherent transceiver architecture of the LumiLink 400G-ZR+ as consistent with the approach claimed in OWS's '193 Patent.
• LumiLink 800G-DR8: Benchmark completed its follow-on teardown of the LumiLink 800G-DR8 in June 2023. This analysis confirmed that the LumiLink 800G-DR8, like the LumiLink 400G-ZR+, incorporates waveguide multiplexer structures, coherent transceiver architecture, and micro-channel thermal management features consistent with the '847, '193, and '562 Patents. The analysis further identified a polarization-diverse grating coupler structure consistent with the '015 Patent's claims.
• LumiEdge 1600G-LR: Benchmark completed its teardown of the LumiEdge 1600G-LR in February 2024. This analysis confirmed the presence of coherent transceiver architecture consistent with the '193 Patent and a polarization-diverse grating coupler consistent with the '015 Patent.
Kevin Ng, the lead engineer for all three teardown analyses, was deposed on January 7, 2025. During his deposition, Mr. Ng confirmed the methodology employed in each teardown, the chain of custody for the accused product samples, and the specific structures identified in each accused product that correspond to each asserted claim limitation. Mr. Ng's testimony provides a solid evidentiary foundation for the Benchmark teardown reports and will support their admissibility at trial.
The close structural correspondence between Lumicore's accused products and OWS's patented designs — examined in combination with the evidence that Lumicore's engineers studied OWS's published patent applications during the design phase of the first accused product — supports a strong inference of deliberate copying. The structural similarity is not limited to general design principles or high-level architectural choices; rather, it extends to specific structural features that correspond to specific claim limitations of the Asserted Patents. This level of correspondence is inconsistent with independent development and is instead indicative of a design process that was directly informed by OWS's patented technology.
D. Post-Notice Continuation of Accused Conduct
The evidence of copying is further strengthened by Lumicore's continued and expanded use of OWS's patented technology even after receiving actual notice of OWS's patent rights. This post-notice continuation of accused conduct demonstrates both deliberate copying and an indifference to OWS's patent rights that is relevant to the willfulness analysis as well.
FairPoint Licensing Group, LLC — OWS's licensing agent (Managing Director: Angela Reeves; located at 500 Sansome Street, Suite 1400, San Francisco, CA 94111) — sent two notice and licensing letters to Lumicore:
• First Letter (January 15, 2023): Addressed to Raymond Bautista, Lumicore's General Counsel, this letter identified the '847, '193, and '562 Patents, provided copies of the issued patents, identified specific Lumicore products believed to infringe (LumiLink 400G-ZR+), and invited Lumicore to enter into licensing discussions.
• Second Letter (May 15, 2023): This follow-up letter, also addressed to Raymond Bautista, added the '015 Patent (which had been issued on August 2, 2022, after the first notice letter) and expanded the list of accused products to include the LumiLink 800G-DR8, which had been identified through Benchmark's June 2023 teardown as incorporating additional patented features.
An in-person licensing meeting was held on April 20, 2023, in Austin, Texas. The meeting was attended by Angela Reeves and Rebecca Tanaka (OWS General Counsel) on

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