[sheet: Cover]
Field | Value
Document Title | Master Docket Sheet — OWS Patent Application Family
Client | Optiwave Semiconductor Corp.
Client Short Name | OWS
Client Address | 4710 Ridgeview Parkway, Suite 300, Santa Clara, CA 95054
Client EIN | 83-2947105
Client Delaware File No. | 7284931
Client California SOS Entity No. | C4195872
Firm | Calderwood & Harkness LLP
Firm Address | 555 California Street, 42nd Floor, San Francisco, CA 94104
C&H Matter No. | 1014-00005
Engagement Opened | February 14, 2022
Engagement Letter Executed | February 10, 2022
Responsible Partner | Catherine Bloom (USPTO Reg. No. 58,412)
Billing Partner | Alan Ngo (USPTO Reg. No. 61,877)
Lead Associate | Christy Bauer (USPTO Reg. No. 74,329)
Working Associate | Peter Vassiliev (USPTO Reg. No. 79,514)
Docket Status | DORMANT — Budget freeze effective August 11, 2023 (Project Lighthouse)
Last Billable Activity | September 6, 2023 (2-month extension filed for A1, 17/672,204)
Last Updated | January 15, 2025
Updated By | Christy Bauer
Docketing Agent | Trident intellectual Property Services, LLC (Account Mgr: Lisa Cheng)
Prior Patent Counsel | Kessler & Morin LLP (Dr. Helen Kessler, lead partner)
Japanese Foreign Associate | Nakashima & Togawa Patent Professional Corp. (Kenji Nakashima)
European Foreign Associate | Breitenfeld & Vogt Patentanwälte PartGmbB (Dr. Matthias Vogt)
PE Sponsor | Harborview Partners
Lender | Meridian National Bank, N.A. — $55M Senior Secured Revolving Credit Facility (IP collateral pledge; $32.5M drawn as of Dec. 31, 2024)
IP Valuation (Graystone Valuation Advisors, Apr. 28, 2023) | Total portfolio: $38.5M; Pending app. family: $12.2M
Classification | PRIVILEGED AND CONFIDENTIAL — ATTORNEY WORK PRODUCT
[sheet: Priority Application]
Docket ID | Application No. | Application Type | Title | Filing Date | Jurisdiction | Filed By | Named Inventors | Status | Expiration Date | Notes
PROV-1 | 63/297,841 | U.S. Provisional | Multi-Channel Silicon-Photonic Mach-Zehnder Modulator with Segmented Traveling-Wave Electrode Architecture | January 10, 2022 | USPTO | Kessler & Morin LLP (Dr. Helen Kessler) | Dr. Rajan Menon; Dr. Lena Strickland; Dr. Feng-Yi Chen; Dr. Arjun Dasgupta | EXPIRED | January 10, 2023 (12-month statutory term) | Priority preserved through timely non-provisional filings (A1, A4, A5 filed Jan. 9, 2023). Originally filed by Kessler & Morin LLP prior to engagement transition to C&H.
[sheet: Pending Applications]
Docket ID | Sub-Family | Application No. | Application Type | Filing Date | Jurisdiction | Priority Claim | Prosecution Status | Next Deadline | Deadline Description | Extensions Purchased | Further Extensions Available | Priority Flag | Responsible Attorney | Drafter / Primary Handler | Foreign Associate | Estimated Cost to Address Next Action | Pinnacle Design-Around Relevance | Graystone Valuation Notes | Lender Covenant Relevance | Notes
A1 | A — Core Modulator Architecture | 17/672,204 | U.S. Non-Provisional | January 9, 2023 | USPTO | Claims priority to Provisional 63/297,841 (filed Jan. 10, 2022) | Non-final Office Action received; draft response in progress (incomplete — suspended Aug. 2023 due to budget freeze); 2-month extension of time filed Sep. 6, 2023 (fee: $640) | March 9, 2025 | Final deadline to respond to non-final Office Action (6-month statutory period; 2-month extension purchased Sep. 6, 2023; remaining 4 months expire Mar. 9, 2025) | 2-month extension filed Sep. 6, 2023 ($640 small entity fee) | NO — all extensions consumed; ABSOLUTE DEADLINE | RED | Catherine Bloom | Christy Bauer | N/A | $22,000–$30,000 (40–55 attorney hours at blended rate + USPTO fees; ~$2,000 if RCE needed) | CRITICAL — Claims tapered impedance-matching design-around feature to distinguish over Pinnacle Optics U.S. Pat. Nos. 10,823,417 and 11,105,662. Abandonment eliminates defensive patent position and exposes OWS to infringement assertion. FTO analysis (Oct. 14, 2022) rated risk as moderate-to-high absent design-around. | Part of pending family valued at $12.2M by Graystone Valuation Advisors (Apr. 28, 2023 report). Foundational application of the family. | Likely constitutes Material intellectual Property under Meridian Credit Facility Section 5.15; abandonment may trigger covenant default. | HIGHEST PRIORITY. Foundational U.S. application for the entire family. Incomplete draft OA response prepared by Christy Bauer through Aug. 2023 — requires completion, partner review by Catherine Bloom, and filing before Mar. 9, 2025. No further extensions available.
A2 | A — Core Modulator Architecture | 17/672,311 | U.S. Continuation | March 15, 2023 | USPTO | Continuation of 17/672,204; claims priority to Provisional 63/297,841 | Awaiting First Office Action | Est. Q2 2025 | Estimated first Office Action issuance (no response deadline yet set) | N/A | N/A — no deadline pending | GREEN | Catherine Bloom | Christy Bauer | N/A | No immediate cost; response cost TBD upon OA issuance | Continuation provides additional claim scope options for design-around strategy | Part of $12.2M pending family valuation | Falls within general IP covenant language | No immediate action required. Continuation vehicle for alternative claim sets.
A3 | A — Core Modulator Architecture | 17/672,489 | U.S. Continuation-in-Part | June 22, 2023 | USPTO | CIP of 17/672,204; claims priority to Provisional 63/297,841; includes new matter | Awaiting First Office Action | Est. Q3 2025 | Estimated first Office Action issuance | N/A | N/A | GREEN | Catherine Bloom | Christy Bauer | N/A | No immediate cost; response cost TBD upon OA issuance | IMPORTANT — Contains additional tapered impedance-matching embodiments; key complement to A1 for Pinnacle design-around coverage | Part of $12.2M pending family valuation | Falls within general IP covenant language | CIP adds new matter beyond provisional disclosure. Important backup if A1 claims are narrowed during prosecution.
A4 | A — Core Modulator Architecture | PCT/US2023/010584 | PCT International | January 9, 2023 | WIPO / USPTO (Receiving Office) | Claims priority to Provisional 63/297,841 (filed Jan. 10, 2022) | International phase complete; Chapter I report (ISR/WO) issued Jul. 14, 2023. EP regional phase entered as B3 (EP 23 741 682.3) on Jul. 5, 2023; JP national phase entered as B4 (JP 2024-542197) on Jul. 3, 2023. | July 9, 2025 | 30-month national phase entry deadline (30 months from Jan. 10, 2022 priority date) for any additional jurisdictions beyond EP and JP already entered (e.g., South Korea, China) | N/A | N/A — statutory deadline; no extensions | YELLOW | Peter Vassiliev | Peter Vassiliev | Jurisdiction-dependent | National phase entry costs vary by jurisdiction (~$3,000–$8,000 per jurisdiction for filing fees + foreign associate fees) | Enables international protection for modulator architecture | Part of $12.2M pending family valuation | International filings may be encompassed by general covenant language | Decision needed by OWS on which additional national phases (if any) to enter beyond EP and JP already entered. If no additional jurisdictions desired, deadline is moot for this application.
A5 | A — Core Modulator Architecture | PCT/US2023/010612 | PCT International | January 9, 2023 | WIPO / USPTO (Receiving Office) | Claims priority to Provisional 63/297,841 (filed Jan. 10, 2022) | International phase complete; Chapter I report issued Aug. 2, 2023. EP regional phase entered as C2 (EP 23 765 901.7) on Jul. 8, 2023; JP national phase entered as C3 (JP 2024-542305) on Jul. 8, 2023. | July 9, 2025 | 30-month national phase entry deadline for any additional jurisdictions beyond EP and JP already entered | N/A | N/A — statutory deadline; no extensions | YELLOW | Peter Vassiliev | Peter Vassiliev | Jurisdiction-dependent | National phase entry costs vary by jurisdiction (~$3,000–$8,000 per jurisdiction) | Enables international protection for packaging/thermal aspects | Part of $12.2M pending family valuation | International filings may be encompassed by general covenant language | Same decision point as A4. Client instruction needed on additional jurisdictions.
B1 | B — Electrode Fabrication Process | 17/814,057 | U.S. Non-Provisional | July 21, 2023 | USPTO | Related to Sub-Family A; claims priority to Provisional 63/297,841 | Restriction Requirement received; original 2-month response deadline was Oct. 21, 2024; emergency 4-month extension filed Oct. 18, 2024 ($2,560 fee) extending deadline to Apr. 21, 2025 | April 21, 2025 | Deadline to respond to Restriction Requirement (extended by 4-month purchased extension) | 4-month extension filed Oct. 18, 2024 ($2,560 small entity fee; authorized by Sandra Koh under emergency exception to Project Lighthouse) | 2 additional months purchasable (max total 6 months); would extend to Jun. 21, 2025 if needed | RED | Catherine Bloom | Christy Bauer / Peter Vassiliev | N/A | $4,500–$6,750 (8–12 attorney hours at blended rate; $0 USPTO fee for restriction response) | Electrode fabrication process claims complement modulator architecture claims | Part of $12.2M pending family valuation | Likely Material intellectual Property under Meridian covenant | Response requires election among restricted groups. Divisional application B2 to be filed upon election. Relatively straightforward response but requires client input on group election.
B2 | B — Electrode Fabrication Process | 17/814,103 (placeholder — not yet filed) | U.S. Divisional (of B1) | July 21, 2023 (placeholder filing date; actual divisional filing date TBD) | USPTO | Divisional of 17/814,057 (B1); claims priority to Provisional 63/297,841 | PLACEHOLDER — Not yet filed; to be filed upon election/restriction response in B1 | Depends on B1 response | Filing deadline tracks B1 restriction response; divisional must be filed while B1 is pending | N/A | N/A | GREEN | Catherine Bloom | Christy Bauer | N/A | Included in B1 response cost estimate; additional filing fees ~$1,600–$2,000 | Covers non-elected invention groups from B1 restriction | Part of $12.2M pending family valuation | Falls within general covenant language | Cannot file until B1 restriction response is submitted and election is made. Serial number 17/814,103 is a placeholder assigned at initial filing.
B3 | B — Electrode Fabrication Process | EP 23 741 682.3 | European regional phase (derived from PCT A4, PCT/US2023/010584) | July 5, 2023 | EPO | Claims priority to Provisional 63/297,841 via PCT/US2023/010584 | Entered European regional phase; Extended European Search Report (EESR) received Nov. 17, 2023; response deadline set under EPO Rules 70a, 161, 162 | May 17, 2025 | Response to EESR due (6 months from deemed notification date of Nov. 17, 2023) | N/A | EPO further processing may be available if deadline missed (at additional cost/risk) | YELLOW | Peter Vassiliev | Peter Vassiliev | Breitenfeld & Vogt Patentanwälte PartGmbB (Dr. Matthias Vogt), Leopoldstrasse 44, 80802 Munich, Germany | $15,000–$22,000 total (C&H fees $11,250–$16,875 for 20–30 hrs + B&V foreign associate fees €3,500–€5,000 + EPO examination fee ~€580 if not yet paid) | European counterpart to electrode fabrication process claims | Part of $12.2M pending family valuation | May be encompassed by Meridian covenant depending on interpretation of 'Material intellectual Property' | Status inquiry letter sent to B&V on Nov. 30, 2023 by Peter Vassiliev confirming EESR receipt and May 17, 2025 deadline. Requires coordination with B&V for response preparation.
B4 | B — Electrode Fabrication Process | JP 2024-542197 | Japanese national phase (derived from PCT A4, PCT/US2023/010584) | July 3, 2023 | JPO | Claims priority to Provisional 63/297,841 via PCT/US2023/010584 | Entered Japanese national phase; awaiting examination request filing. Hold notice sent to Nakashima & Togawa on Sep. 20, 2023. | January 9, 2026 | Examination request deadline (3 years from PCT international filing date of Jan. 9, 2023) | N/A | N/A — statutory deadline; no extensions | GREEN | Peter Vassiliev | Peter Vassiliev | Nakashima & Togawa Patent Professional Corp. (Kenji Nakashima), 2-4-16 Toranomon, Minato-ku, Tokyo 105-0001, Japan | JPO examination request fee ~¥150,000 + N&T associate fees ~¥200,000–¥350,000 | Japanese counterpart to electrode fabrication process claims | Part of $12.2M pending family valuation | May be encompassed by Meridian covenant | Hold notice sent to N&T Sep. 20, 2023 pending budget resolution. Deadline sufficiently distant but must be calendared.
C1 | C — Packaging & Thermal Management | 18/102,776 | U.S. Non-Provisional | January 29, 2024 | USPTO | Related to Sub-Family A; claims benefit of earlier filings | Filed under pre-freeze budget authorization just before freeze fully took effect; awaiting First Office Action | Est. Q4 2025 | Estimated first Office Action issuance | N/A | N/A — no deadline pending | GREEN | Catherine Bloom | Christy Bauer | N/A | No immediate cost; response cost TBD upon OA issuance | Packaging/thermal claims are complementary but less directly relevant to Pinnacle design-around | Part of $12.2M pending family valuation | Falls within general covenant language | Last application filed in the family. Authorized under pre-freeze budget before Project Lighthouse fully implemented.
C2 | C — Packaging & Thermal Management | EP 23 765 901.7 | European regional phase (derived from PCT A5, PCT/US2023/010612) | July 8, 2023 | EPO | Claims priority to Provisional 63/297,841 via PCT/US2023/010612 | Entered European regional phase; Rule 161/162 communication received; response filed Sep. 1, 2023 (by Peter Vassiliev via B&V). Awaiting EESR. | Est. mid-2025 | Estimated EESR issuance; response deadline will be set upon receipt | N/A | N/A — no deadline pending | GREEN | Peter Vassiliev | Peter Vassiliev | Breitenfeld & Vogt Patentanwälte PartGmbB (Dr. Matthias Vogt) | No immediate cost; EESR response costs TBD | European counterpart to packaging/thermal claims | Part of $12.2M pending family valuation | May be encompassed by Meridian covenant | Rule 161/162 response was the last substantive EPO filing before dormancy. Application is in good standing pending EESR.
C3 | C — Packaging & Thermal Management | JP 2024-542305 | Japanese national phase (derived from PCT A5, PCT/US2023/010612) | July 8, 2023 | JPO | Claims priority to Provisional 63/297,841 via PCT/US2023/010612 | Entered Japanese national phase; awaiting examination request filing. Hold notice sent to Nakashima & Togawa on Sep. 20, 2023. | January 9, 2026 | Examination request deadline (3 years from PCT international filing date of Jan. 9, 2023) | N/A | N/A — statutory deadline; no extensions | GREEN | Peter Vassiliev | Peter Vassiliev | Nakashima & Togawa Patent Professional Corp. (Kenji Nakashima) | JPO examination request fee ~¥150,000 + N&T associate fees ~¥200,000–¥350,000 | Japanese counterpart to packaging/thermal claims | Part of $12.2M pending family valuation | May be encompassed by Meridian covenant | Same hold status as B4. Deadline sufficiently distant.
[sheet: Deadline Summary]
Priority Rank | Docket ID | Application No. | Jurisdiction | Deadline Date | Deadline Type | Priority Flag | Absolute? | Extensions Remaining | Estimated Cost | Consequence of Missing Deadline | Action Required
1 | A1 | 17/672,204 | USPTO | March 9, 2025 | Non-final Office Action response (6-month statutory; all extensions consumed) | RED | Yes — ABSOLUTE | None — 2-month extension already purchased; no further extensions available | $22,000–$30,000 | ABANDONMENT of foundational U.S. application. Irrevocable loss of tapered impedance-matching design-around claims. OWS left exposed to Pinnacle Optics infringement assertion (moderate-to-high risk per FTO). Potential Meridian Credit Facility Section 5.15 covenant default. Loss of ~$12.2M in portfolio value attributed to pending family. | Complete and file draft OA response (Christy Bauer to finalize; Catherine Bloom partner review). Urgent budget authorization needed from OWS/Veltrano.
2 | B1 | 17/814,057 | USPTO | April 21, 2025 | Restriction Requirement response (4-month extension purchased Oct. 18, 2024) | RED | No — 2 additional months purchasable (max extends to Jun. 21, 2025) | 2 months remaining (at additional fee) | $4,500–$6,750 | ABANDONMENT of electrode fabrication process application. Loss of B2 divisional filing vehicle. Potential covenant default. | Prepare restriction response with group election; file divisional B2 for non-elected groups. Client instruction needed on election.
3 | B3 | EP 23 741 682.3 | EPO | May 17, 2025 | Response to Extended European Search Report (EPO Rules 70a, 161, 162) | YELLOW | No — EPO further processing may be available | Further processing potentially available under EPC (at additional cost/risk) | $15,000–$22,000 | Deemed withdrawal of European application under EPC rules. Loss of European electrode fabrication process patent protection. | Coordinate with B&V (Dr. Matthias Vogt) to prepare EESR response. C&H to draft substantive amendments/arguments; B&V to file.
4 | A4 | PCT/US2023/010584 | WIPO (national phases) | July 9, 2025 | 30-month national phase entry deadline (additional jurisdictions beyond EP/JP already entered) | YELLOW | Yes — statutory; no extensions | None | ~$3,000–$8,000 per additional jurisdiction | Permanent forfeiture of patent rights in all unselected jurisdictions (e.g., South Korea, China, etc.). | Client to identify desired additional national phase jurisdictions (if any). If none desired beyond EP (B3) and JP (B4) already entered, no action needed.
5 | A5 | PCT/US2023/010612 | WIPO (national phases) | July 9, 2025 | 30-month national phase entry deadline (additional jurisdictions beyond EP/JP already entered) | YELLOW | Yes — statutory; no extensions | None | ~$3,000–$8,000 per additional jurisdiction | Permanent forfeiture of patent rights in all unselected jurisdictions. | Same as A4 — client instruction needed on additional jurisdictions. If none desired beyond EP (C2) and JP (C3) already entered, no action needed.
6 | B4 | JP 2024-542197 | JPO | January 9, 2026 | Examination request deadline (3 years from PCT international filing date) | GREEN | Yes — statutory; no extensions | None | JPO exam request fee ~¥150,000 + N&T fees ~¥200,000–¥350,000 | Application deemed withdrawn at JPO. Loss of Japanese electrode fabrication process protection. | File examination request through Nakashima & Togawa. Hold notice currently in place (sent Sep. 20, 2023); lift hold and instruct N&T when budget permits.
7 | C3 | JP 2024-542305 | JPO | January 9, 2026 | Examination request deadline (3 years from PCT international filing date) | GREEN | Yes — statutory; no extensions | None | JPO exam request fee ~¥150,000 + N&T fees ~¥200,000–¥350,000 | Application deemed withdrawn at JPO. Loss of Japanese packaging/thermal protection. | File examination request through Nakashima & Togawa. Same hold status as B4.
[sheet: Named Inventors]
Inventor Name | Title | Affiliation | Education | Applications Named On
Dr. Rajan Menon | CEO | Optiwave Semiconductor Corp. | Ph.D. Electrical Engineering, UC Berkeley | A1, A2, A3, A4, A5, B1, B2, B3, B4, C1, C2, C3
Dr. Lena Strickland | VP Engineering | Optiwave Semiconductor Corp. | Ph.D. Photonics, MIT | A1, A2, A3, A4, A5, B1, B2, B3, B4, C1, C2, C3
Dr. Feng-Yi Chen | Principal Engineer | Optiwave Semiconductor Corp. | Ph.D. Materials Science, Stanford | A1, A2, A3, A4, A5, B1, B2, B3, B4, C1, C2, C3
Dr. Arjun Dasgupta | Senior Design Engineer | Optiwave Semiconductor Corp. | Ph.D. Electrical Engineering, Georgia Tech | A1, A2, A3, A4, A5, B1, B2, B3, B4, C1, C2, C3
[sheet: Budget & Financials]
Item | Amount / Value | Notes
C&H Partner Rate (standard) | $895/hr | Catherine Bloom, Alan Ngo
C&H Partner Rate (Discounted, 10% volume discount) | $805.50/hr | Per engagement letter dated Feb. 10, 2022
C&H Senior Associate Rate (standard) | $625/hr | Christy Bauer
C&H Senior Associate Rate (Discounted) | $562.50/hr | 10% volume discount
C&H Associate Rate (standard) | $475/hr | Peter Vassiliev
C&H Associate Rate (Discounted) | $427.50/hr | 10% volume discount
Pre-Freeze Avg. Quarterly C&H Spend | $87,400/quarter | Average of 4 quarters preceding Aug. 11, 2023 freeze
Project Lighthouse Quarterly IP Spend Cap | $25,000/quarter | Imposed by Harborview Partners effective Aug. 11, 2023; applies to all outside counsel discretionary IP spend
Quarterly Spend Overage vs. Cap | $62,400 | =$87,400 – $25,000
C&H Outstanding Unbilled WIP | $34,218.50 | As of dormancy
C&H Unpaid Invoices | $22,740.00 | Invoice Nos. 2023-07-04187 and 2023-08-04187
C&H Total Outstanding (WIP + A/R) | $56,958.50 | =$34,218.50 + $22,740.00
Extension Fee Paid — A1 (2-month, Sep. 6, 2023) | $640 | Small entity rate; last billable activity
Extension Fee Paid — B1 (4-month, Oct. 18, 2024) | $2,560 | Small entity rate; emergency authorization from Sandra Koh
Est. Cost — A1 OA Response | $22,000–$30,000 | 40–55 hrs × blended rate + USPTO fees (~$2,000 if RCE needed)
Est. Cost — B1 Restriction Response | $4,500–$6,750 | 8–12 hrs × blended rate; $0 USPTO fee for restriction response
Est. Cost — B3 EESR Response (total) | $15,000–$22,000 | C&H fees ($11,250–$16,875) + B&V fees (€3,500–€5,000) + EPO fees (~€580)
Est. Full Docket Reactivation — Attorney Fees | $185,000–$245,000 | Through mid-2026
Est. Full Docket Reactivation — Govt/Foreign Assoc. Fees | $35,000–$50,000 | Through mid-2026
Est. Full Docket Reactivation — TOTAL | $220,000–$295,000 | Attorney fees + govt/foreign associate fees through mid-2026
Graystone Portfolio Valuation — Total (Apr. 28, 2023) | $38.5M | Graystone Valuation Advisors, LLC (Rebecca Thornton, lead partner)
Graystone — Issued Patents Value | $26.3M | 31 issued U.S. utility patents
Graystone — Pending Application Family Value | $12.2M | 12 pending applications (~31.7% of total portfolio value)
Meridian Revolving Credit Facility — Total Size | $55M | Senior secured; IP collateral pledge; Section 5.15 IP covenant
Meridian Facility — Amount Drawn (Dec. 31, 2024) | $32.5M | $22.5M undrawn capacity
OWS FY 2022 Revenue | $68.1M
OWS FY 2023 Revenue | $47.3M | Down $20.8M (–30.5%) YoY; triggered sector downturn and budget freeze