PRIVILEGED & CONFIDENTIAL — ATTORNEY-CLIENT COMMUNICATION ATTORNEY WORK PRODUCT
MEMORANDUM
TO: Marcus Whitfield, General Counsel, Optiwave Semiconductor Corp. Sandra Koh, IP Manager / In-House Patent Counsel, Optiwave Semiconductor Corp.
FROM: Catherine Bloom (Responsible Partner, IP Group, USPTO Reg. No. 58,412) and Christy Bauer (Lead Associate, IP Group, USPTO Reg. No. 74,329), Calderwood & Harkness LLP
DATE: January 15, 2025
RE: Docket Status Inventory & Deadline Triage — Optiwave Semiconductor Corp. Pending Patent Application Family (C&H Matter No. 1014-00005)
CC: Alan Ngo, Billing Partner; Peter Vassiliev, Working Associate
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I. Purpose and Executive Summary
This memorandum is intended to provide a comprehensive and current inventory of all twelve (12) pending patent applications in the Optiwave Semiconductor Corp. ("OWS" or the "Company") prosecution docket maintained by Calderwood & Harkness LLP ("C&H"), to report the current prosecution status of each application on an application-by-application basis, to identify and rank by urgency all upcoming deadlines across the docket, to state clearly the legal and strategic consequences of missing each deadline, and to provide cost estimates for each action item requiring attention.
This memorandum has become necessary because the OWS patent prosecution docket has been in dormant status since August 11, 2023 — a period now spanning approximately seventeen (17) months — following the imposition of the "Project Lighthouse" budget freeze by Harborview Partners ("Veltrano"), OWS's majority equity sponsor. The Project Lighthouse directive capped all discretionary intellectual property spending at $25,000 per quarter across all outside counsel engagements. In the four fiscal quarters preceding the freeze, C&H's average quarterly patent prosecution spend on the OWS account was approximately $87,400 in C&H fees alone (exclusive of government filing fees and foreign associate fees), exceeding the Veltrano cap by approximately $62,400 per quarter. As a result, all active prosecution work was suspended, and the docket was placed in a monitored dormancy posture.
The last billable C&H activity of record prior to the dormancy period was performed on September 6, 2023, when Peter Vassiliev filed a two-month extension of time for application A1 (U.S. Application No. 17/672,204) with the United States Patent and Trademark Office ("USPTO"), at a fee of $640 (small entity rate). Since that date, only one emergency action has been taken: on October 18, 2024, Peter Vassiliev filed a four-month extension of time for application B1 (U.S. Application No. 17/814,057) at a fee of $2,560 (small entity rate), authorized by Sandra Koh as a one-time exception to the Project Lighthouse freeze via email dated October 15, 2024.
We have now identified five critical deadline clusters approaching between March 2025 and January 2026. The earliest and most consequential of these deadlines — the deadline to respond to a non-final Office Action in A1 (U.S. Application No. 17/672,204) — falls on March 9, 2025, which is less than fifty-three (53) days from the date of this memorandum. This deadline is absolute and non-extendable; all available extensions of time have been fully consumed. Failure to respond by March 9, 2025 will result in the irrevocable abandonment of the foundational U.S. patent application covering OWS's core modulator design-around claims — the very claims that differentiate OWS's products from the blocking patent portfolio held by Pinnacle Optics, Inc.
This memorandum is being provided alongside, and should be read in conjunction with, a separate Budget Reactivation Proposal Memorandum of even date, which presents phased budget scenarios for restoring the docket to active prosecution status. In addition, C&H is preparing under separate cover both a Lender Covenant Compliance Analysis (anticipated delivery January 22, 2025) and an Abandonment Impact Assessment (also anticipated January 22, 2025), each of which addresses specific aspects of the risks arising from continued docket dormancy.
In contextualizing the strategic importance of this docket, we note the following reference materials:
• The Graystone Valuation Advisors portfolio valuation report, dated April 28, 2023, valued OWS's total patent portfolio at approximately $38.5 million, of which approximately $12.2 million (approximately 31.7%) was attributed to the pending patent application family that is the subject of this memorandum. The pending applications thus represent a material asset on OWS's balance sheet and a significant component of the Company's overall intellectual property value.
• The C&H Freedom-to-Operate ("FTO") Analysis, delivered October 14, 2022, concluded that OWS's commercial products face a "moderate-to-high" risk of infringement of Pinnacle Optics' U.S. Patent Nos. 10,823,417 and 11,105,662 absent the design-around features that are the subject of the pending claims — particularly the claims in applications A1 and A3 directed to the "tapered impedance-matching" feature.
• The Meridian National Bank $55M Revolving Credit Facility (dated September 30, 2020, as amended and restated March 15, 2022) contains an intellectual property covenant (Section 5.15) requiring OWS to "maintain, preserve, and protect all Material intellectual Property, including by timely prosecuting all pending patent applications and paying all required maintenance fees." Abandonment of material patent applications could constitute or contribute to a covenant default. A detailed Lender Covenant Compliance Analysis is forthcoming under separate cover.
In sum, the docket currently faces a cascading series of deadlines, several of which are irrevocable and which, if missed, will result in permanent loss of patent rights valued in the millions of dollars and the elimination of OWS's principal defensive position against Pinnacle Optics' blocking patent assertions. Immediate client authorization and budget allocation are required to address the most urgent of these deadlines.
II. Background
A. Engagement History
Calderwood & Harkness LLP was engaged by Optiwave Semiconductor Corp. to provide patent prosecution services pursuant to an engagement letter executed on February 10, 2022, countersigned by Marcus Whitfield in his capacity as General Counsel. The engagement was formally opened on February 14, 2022, and assigned C&H Matter No. 1014-00005. The C&H team was constituted as follows:
• Responsible Partner: Catherine Bloom, Partner, intellectual Property Group (USPTO Reg. No. 58,412)
• Billing Partner: Alan Ngo, Partner, intellectual Property Group
• Lead Associate: Christy Bauer, Senior Associate, intellectual Property Group (USPTO Reg. No. 74,329)
• Working Associate: Peter Vassiliev, Associate, intellectual Property Group
The original engagement scope covered Sub-Family A (Core Modulator Architecture) and Sub-Family B (Electrode Fabrication Process) of the OWS patent application family. On June 1, 2023, the scope of the engagement was expanded by an engagement scope amendment letter, countersigned by Marcus Whitfield, to include Sub-Family C (Packaging & Thermal Management), which at that time comprised three applications filed or in preparation.
Prior to C&H's engagement, OWS's patent prosecution work was handled by Kessler & Morin LLP ("K&M"), a boutique intellectual property firm based in McLean, Virginia, led by Dr. Helen Kessler. K&M prosecuted all thirty-one (31) of OWS's issued U.S. utility patents during the period from 2017 through 2021, establishing the foundational patent portfolio that underpins OWS's intellectual property position. Importantly, K&M was responsible for the preparation and filing of the priority provisional application — U.S. Provisional Application No. 63/297,841 — filed on January 10, 2022, titled "Multi-Channel Silicon-Photonic Mach-Zehnder Modulator with Segmented Traveling-Wave Electrode Architecture." Several of the continuation and continuation-in-part applications in the current C&H docket claim priority through the chain to K&M-drafted parent applications, and the original specification of the provisional application was drafted by Dr. Kessler's team. C&H received the complete K&M prosecution file history in February 2022 as part of the engagement onboarding process.
B. The Budget Freeze
On August 11, 2023, Harborview Partners — which holds a 72% equity stake in OWS, acquired in 2019 at an enterprise value of approximately $310 million — imposed the "Project Lighthouse" austerity initiative across all of its portfolio companies. The directive, communicated to OWS management by Veltrano operating partners Christine Paulsen and Ted Hargrove, imposed a cap on all discretionary intellectual property spending at $25,000 per quarter across all outside counsel engagements. The cap was designed to apply to patent prosecution, freedom-to-operate analyses, patent landscape studies, and similar discretionary IP activities, though it did not apply to active litigation defense.
The impact of this cap on the C&H engagement was immediate and severe. In the four fiscal quarters preceding the freeze (Q4 2022 through Q3 2023), C&H's average quarterly billing for patent prosecution work on the OWS account was approximately $87,400 in attorney fees alone, exclusive of government filing fees and foreign associate charges. The Veltrano cap of $25,000 per quarter — encompassing not only C&H fees but also all other outside IP counsel fees and disbursements — represented a reduction of approximately 71% from the pre-freeze run rate and was insufficient to sustain active prosecution of the twelve-application docket.
Following consultation between Catherine Bloom, Marcus Whitfield, and Sandra Koh, the determination was made to place the docket in a monitored dormancy posture rather than attempt to prosecute selectively within the constrained budget, given the interdependencies among the applications and the risk that partial prosecution could create inconsistencies in claim scope. C&H issued a Dormancy Acknowledgment Letter dated September 15, 2023, addressed to Marcus Whitfield, formally confirming the paused status of the docket, acknowledging OWS's instruction to suspend active prosecution work, and warning of upcoming deadlines that would require attention notwithstanding the freeze. The letter specifically identified several forthcoming deadlines and noted that C&H's ethical obligations to the client with respect to deadline notification and preservation of the client's rights would continue regardless of the payment or budget status.
The Project Lighthouse freeze was driven by a sector-wide revenue downturn in the silicon photonics and semiconductor industries during 2023. OWS's fiscal year 2023 revenue was $47.3 million, representing a decline of $20.8 million (approximately 30.5%) from fiscal year 2022 revenue of $68.1 million. This revenue contraction placed significant pressure on OWS's operating budget and contributed to Veltrano's decision to impose broad-based cost reductions across its portfolio.
C. Docket Structure
The OWS patent prosecution docket maintained by C&H comprises twelve (12) pending patent applications, organized into three sub-families, all of which ultimately claim priority — either directly or through a chain of parent applications — to a single provisional application:
U.S. Provisional Application No. 63/297,841 Filed: January 10, 2022 (by Kessler & Morin LLP)
Title: "Multi-Channel Silicon-Photonic Mach-Zehnder Modulator with Segmented Traveling-Wave Electrode Architecture"
Status: Expired January 10, 2023 (12-month statutory term under 35 U.S.C. § 111(b)(5)) Priority: Preserved through timely filing of non-provisional applications on January 9, 2023
The twelve pending applications are organized as follows:
Sub-Family A — Core Modulator Architecture (5 applications):
• A1: U.S. Application No. 17/672,204 (Non-Provisional)
• A2: U.S. Application No. 17/672,311 (Continuation of A1)
• A3: U.S. Application No. 17/672,489 (Continuation-in-Part of A1)
• A4: PCT/US2023/010584 (International Application)
• A5: PCT/US2023/010612 (International Application)
Sub-Family B — Electrode Fabrication Process (4 applications):
• B1: U.S. Application No. 17/814,057 (Non-Provisional)
• B2: U.S. Application No. 17/814,103 (Placeholder Divisional of B1 — not yet formally filed)
• B3: EP 23 741 682.3 (European Regional Phase, entered from PCT A4)
• B4: JP 2024-542197 (Japanese National Phase, entered from PCT A4)
Sub-Family C — Packaging & Thermal Management (3 applications):
• C1: U.S. Application No. 18/102,776 (Non-Provisional)
• C2: EP 23 765 901.7 (European Regional Phase, entered from PCT A5)
• C3: JP 2024-542305 (Japanese National Phase, entered from PCT A5)
The named inventors common to most applications in the docket are: Dr. Rajan Menon (Chief Executive Officer), Dr. Lena Strickland (Vice President, Engineering), Dr. Feng-Yi Chen (Principal Engineer), and Dr. Arjun Dasgupta (Senior Design Engineer). Certain applications include additional co-inventors not listed here; full inventorship information is set forth in the Master Docket Sheet attached as Appendix A.
D. Third-Party Service Providers
In addition to C&H, OWS's patent prosecution activities involve the following third-party service providers, each of whom has been placed on hold or monitoring status in connection with the Project Lighthouse freeze:
Trident intellectual Property Services, LLC (Houston, Texas) serves as OWS's patent annuity and docketing agent, responsible for monitoring and paying maintenance fees on OWS's issued patent portfolio and for supplemental docket monitoring services. The OWS account is managed by Lisa Cheng. Per an C&H letter dated September 12, 2023, Trident was instructed to hold all non-critical filings but to continue comprehensive deadline monitoring and to report any approaching deadlines to both C&H and Sandra Koh at OWS. Trident's docketing system generates automated deadline alerts at 120-day, 90-day, 60-day, and 30-day intervals.
Nakashima & Togawa Patent Professional Corporation (Tokyo, Japan) serves as the foreign associate for the two Japanese national-phase applications in the docket: B4 (JP 2024-542197) and C3 (JP 2024-542305). The lead attorney is Kenji Nakashima. Per an C&H letter dated September 20, 2023, Nakashima & Togawa was instructed to hold on the filing of examination requests for both Japanese applications, pending further instructions from C&H. Nakashima & Togawa confirmed receipt and compliance with this instruction by email dated September 25, 2023. The firm continues to monitor the three-year examination request deadline.
Breitenfeld & Vogt Patentanwälte PartGmbB (Munich, Germany) serves as the foreign associate for the two European Patent Office ("EPO") applications in the docket: B3 (EP 23 741 682.3) and C2 (EP 23 765 901.7). The lead attorney is Dr. Matthias Vogt, whose offices are located at Leopoldstrasse 44, 80802 Munich, Germany. On November 30, 2023, Peter Vassiliev sent a status inquiry to Dr. Vogt regarding the receipt and contents of the Extended European Search Report ("EESR") for application B3, confirming the EESR and the applicable response deadline. Dr. Vogt responded on December 5, 2023, confirming the EESR details and advising that substantive work would be required to address the search report objections. No further substantive communications have occurred with Breitenfeld & Vogt since that date.
E. Competitive Landscape — Pinnacle Optics, Inc.
Any discussion of the OWS patent prosecution docket must be understood against the backdrop of the competitive patent landscape, and specifically the blocking patent position held by Pinnacle Optics, Inc.
Pinnacle Optics, Inc. ("Pinnacle"), headquartered in Newark, California, is a direct competitor to OWS in the silicon photonic modulator space. Pinnacle is represented in patent matters by Cavanaugh Holt & Sayer LLP, led by partner Grant Sayer, and maintains an active and aggressive patent prosecution program. Pinnacle holds two U.S. utility patents of particular relevance to OWS:
• U.S. Patent No. 10,823,417 — Issued November 3, 2020. Claims directed to a silicon-photonic Mach-Zehnder modulator employing a segmented traveling-wave electrode design.
• U.S. Patent No. 11,105,662 — Issued August 31, 2021. Claims directed to related modulator architectures with segmented traveling-wave electrode configurations, including specific electrode geometry and impedance-matching structures.
The claims of Pinnacle's '417 and '662 patents overlap with OWS's commercial technology in the area of electrode segmentation geometry. OWS's pending patent claims — particularly those in applications A1 (U.S. 17/672,204) and A3 (U.S. 17/672,489) — are specifically drafted to claim around Pinnacle's electrode-segmentation geometry by specifying a distinct "tapered impedance-matching" feature that differentiates OWS's modulator architecture from the configurations claimed in Pinnacle's patents. This design-around approach was developed in close consultation between C&H and OWS's engineering team, led by Dr. Feng-Yi Chen and Dr. Arjun Dasgupta, during the initial claim drafting process in early 2023.
The strategic significance of the pending claims cannot be overstated. As documented in C&H's Freedom-to-Operate Analysis delivered October 14, 2022, OWS's commercial products face a "moderate-to-high" risk of infringement of Pinnacle's '417 patent absent the design-around features covered by the pending claims. The FTO analysis specifically identified the tapered impedance-matching electrode structure as the critical differentiating feature that, if claimed and ultimately patented, would provide OWS with a defensive patent position capable of supporting a non-infringement argument or forming the basis for a cross-license negotiation with Pinnacle.
Abandonment of A1 would eliminate OWS's ability to obtain claims covering the tapered impedance-matching design-around. This would potentially leave OWS exposed to infringement assertion by Pinnacle with no meaningful defensive patent position, and would materially undermine OWS's leverage in any future licensing or cross-licensing discussions. Pinnacle's prosecution activity shows no signs of abating; public records indicate that Pinnacle has filed at least four additional continuation applications in its own patent family since 2022, suggesting an intent to broaden its claim coverage in this technology space.
III. Complete Docket Inventory — Application-by-Application Status
This section provides a detailed status report for each of the twelve (12) pending patent applications in the OWS prosecution docket, organized by sub-family. For each application, we report the application type, filing date, jurisdiction, current prosecution status, next deadline, consequence of missing that deadline, and our assessment of the application's strategic significance to OWS.
A. Sub-Family A — Core Modulator Architecture
Sub-Family A comprises five applications directed to the core modulator architecture, including the fundamental Mach-Zehnder modulator design with the tapered impedance-matching electrode feature. This sub-family includes the most strategically significant application in the docket (A1) as well as related continuation, continuation-in-part, and international applications designed to provide comprehensive global claim coverage for the core technology.
A1: U.S. Application No. 17/672,204.
Current Prosecution Status: A non-final Office Action was mailed by the USPTO on March 9, 2024. The Office Action raised rejections under 35 U.S.C. § 103 (obviousness) based on a combination of three prior art references, including one Pinnacle Optics publication. The original shortened statutory period for response was three (3) months from the mailing date — i.e., June 9, 2024. A two-month extension of time was purchased by Peter Vassiliev on September 6, 2023 (fee: $640, small entity rate), extending the deadline. However, the three-month shortened statutory period, plus the two-month extension, plus the remaining statutory entitlement, yields a maximum response date of March 9, 2025, which represents the absolute six-month statutory deadline under 37 C.F.R. § 1.136(a). All five months of extension have been consumed — three months of shortened statutory period plus three additional months equal six months, which is the statutory maximum under 35 U.S.C. § 133.
An incomplete draft Office Action response was prepared by Christy Bauer through August 2023, prior to the suspension of work under the Project Lighthouse freeze. The draft contains proposed claim amendments specifically designed to emphasize the tapered impedance-matching feature as a point of distinction over Pinnacle's patents and the prior art cited in the Office Action. The draft also includes a preliminary set of remarks and arguments addressing the Examiner's obviousness rejections. However, the draft was suspended prior to partner review by Catherine Bloom and is not yet in a form suitable for filing. Substantial additional work is required to finalize the response, including completion of the claim amendment analysis, refinement of the arguments section, preparation of a declaration if deemed advisable, and partner review.
Next Deadline: March 9, 2025 — Absolute six-month statutory deadline for response to the non-final Office Action.
Extendable? NO. All extensions of time have been exhausted. No further extension is available under 37 C.F.R. § 1.136(a). This is the final, non-extendable statutory deadline. There is no mechanism available under the patent rules to extend this date.
Consequence of Missing Deadline: The application will be considered abandoned as of the response deadline under 35 U.S.C. § 133. While a petition to revive under 37 C.F.R. § 1.137 may theoretically be available upon a showing that the delay was "unintentional," such petitions are discretionary, require payment of the petition fee, require that the omitted response be filed concurrently with the petition, and — importantly — involve inherent uncertainty as to the outcome. Moreover, in circumstances where the abandonment results from a deliberate business decision to freeze prosecution spending, rather than from an inadvertent clerical error, the prospects for a successful petition to revive may be significantly diminished. The abandonment of A1 would result in the permanent loss of the foundational U.S. application covering the core modulator design-around claims, including the tapered impedance-matching feature that is the linchpin of OWS's strategy for distinguishing its products from Pinnacle's blocking patents.
Strategic Significance: HIGHEST PRIORITY. The loss of A1 is the single most consequential risk in this docket. As discussed in Section II.E above, A1 contains the claims specifically drafted to secure OWS's design-around position vis-à-vis Pinnacle's '417 and '662 patents. Without A1, OWS would lose its principal defensive patent position and would face "moderate-to-high" infringement exposure as identified in C&H's FTO analysis. The cascading effects of A1 abandonment would extend to the valuation of the entire pending application family, to OWS's negotiating position in any future licensing discussions with Pinnacle, and potentially to OWS's compliance with its lender covenants.
A2: U.S. Application No. 17/672,311.
Current Prosecution Status: A2 was filed as a continuation of A1, sharing the same specification but presenting a different set of claims directed to alternative aspects of the core modulator architecture. The application is currently pending before the USPTO and awaiting issuance of a first Office Action. Based on current USPTO pendency statistics for Art Unit 2878, we estimate the first Office Action will issue in approximately Q2 2025, though this timeline is subject to significant variability depending on the Examiner's docket.
Next Deadline: No statutory deadline is currently pending. The next deadline will arise when the first Office Action is issued, at which point a three-month shortened statutory period will commence (extendable to a maximum of six months).
Consequence of Inaction: There is no immediate risk of loss or abandonment. However, we note that if A1 is abandoned and A2's claims are not specifically tailored to capture the full scope of A1's design-around claim coverage, the continuation may not fully preserve OWS's defensive patent position. A2's claims as currently drafted address alternative claim scope and do not duplicate A1's specific tapered impedance-matching claims. If A1 abandonment becomes a realistic possibility, C&H would recommend filing a preliminary amendment in A2 to add claims capturing A1's critical claim scope, though this would be a second-best alternative to preserving A1 itself.
Strategic Significance: Moderate. A2 serves as a vehicle for pursuing alternative claim scope and provides a backstop continuation vehicle. Its strategic importance would increase significantly if A1 were to encounter insurmountable prosecution difficulties or, in a worst-case scenario, were to be abandoned.
A3: U.S. Application No. 17/672,489.
Current Prosecution Status: A3 was filed as a continuation-in-part of A1, incorporating additional disclosure relating to the tapered impedance-matching feature — including experimental data and refined design parameters generated by OWS's engineering team in the months following the filing of the original provisional application. This additional CIP subject matter, which is not present in the parent provisional or in A1, provides an independently valuable basis for claim support, particularly with respect to the specific geometric and impedance parameters of the tapered electrode design that distinguish OWS's modulator from Pinnacle's configurations. A3 is currently pending before the USPTO and awaiting issuance of a first Office Action. Based on its later filing date, we estimate the first Office Action will issue in approximately Q3 2025.
Next Deadline: No statutory deadline is currently pending. The next deadline will arise upon issuance of the first Office Action.
Consequence of Inaction: No immediate risk. However, A3 contains CIP subject matter that is independently valuable for the Pinnacle design-around strategy. The CIP claims, to the extent they rely on the new matter added in A3's specification, are entitled to a priority date of June 22, 2023 (the A3 filing date) rather than the January 10, 2022 provisional date. This later priority date should be kept in mind when assessing intervening prior art.
Strategic Significance: Moderate-to-High. A3 is an important complement to A1's claims for the Pinnacle design-around. Its CIP subject matter provides additional specificity and support for the tapered impedance-matching feature that may prove valuable if A1's prosecution encounters prior art challenges that cannot be overcome with the parent specification alone.
A4: PCT/US2023/010584.
Current Prosecution Status: The international phase of A4 is complete. The International Search Report and Written Opinion of the International Searching Authority ("ISR/WO") were issued on July 14, 2023. The ISR cited several references and the Written Opinion raised preliminary observations on novelty and inventive step, but no mandatory action is required during the international phase; these observations will be addressed in the national/regional phase prosecution.
Two national-phase entries have already been completed from this PCT application:
• B3 (EP 23 741 682.3) — Entered the European regional phase at the EPO on July 5, 2023.
• B4 (JP 2024-542197) — Entered the Japanese national phase at the JPO on July 3, 2023.
No additional national-phase entries have been made to date.
Next Deadline: July 9, 2025 — This is the 30-month national-phase entry deadline, calculated as 30 months from the January 10, 2022 priority date (the filing date of provisional application 63/297,841). Any national or regional phase entries beyond those already completed (EP and JP) must be made on or before this date.
Extendable? NO. The 30-month deadline is established by the Patent Cooperation Treaty and is statutory in nature. It is not extendable under any circumstances.
Consequence of Missing Deadline: Permanent and irrevocable forfeiture of the right to enter national or regional phases in any jurisdiction beyond those already entered. The European and Japanese entries are not affected because they were completed prior to the deadline. However, if OWS has commercial interests in additional jurisdictions — such as South Korea, the People's Republic of China, India, Taiwan, Singapore, or others — the opportunity to obtain patent protection in those jurisdictions from this PCT application will be permanently lost.
Strategic Significance: Medium. The significance of this deadline depends entirely on OWS's commercial plans for additional international markets. The core markets of the United States, Europe, and Japan are already covered through existing applications. OWS management will need to make a strategic commercial determination regarding additional jurisdictions.
A5: PCT/US2023/010612.
Current Prosecution Status: The international phase of A5 is complete. The International Search Report and Written Opinion were issued on August 2, 2023. As with A4, no mandatory action is required during the international phase.
Two national-phase entries have already been completed from this PCT application:
• C2 (EP 23 765 901.7) — Entered the European regional phase at the EPO on July 8, 2023.
• C3 (JP 2024-542305) — Entered the Japanese national phase at the JPO on July 8, 2023.
No additional national-phase entries have been made.
Next Deadline: July 9, 2025 — Same 30-month national-phase entry deadline as A4 (30 months from the January 10, 2022 priority date).
Extendable? NO. Same as A4 — the PCT 30-month deadline is statutory and non-extendable.
Consequence of Missing Deadline: Same as A4 — permanent forfeiture of the right to obtain patent protection in any additional jurisdictions beyond the European and Japanese entries already completed.
Strategic Significance: Medium. Same commercial considerations as A4. OWS must determine whether additional international coverage for the packaging and thermal management technology is warranted.
B. Sub-Family B — Electrode Fabrication Process
Sub-Family B comprises four applications directed to OWS's proprietary electrode fabrication process for segmented traveling-wave electrodes. These claims are commercially significant because they cover OWS's manufacturing methods — providing an independent basis for IP protection that complements the device-level claims in Sub-Family A. Even if a competitor were to design around OWS's modulator architecture, the electrode fabrication process claims could independently prevent copying of OWS's manufacturing techniques.
B1: U.S. Application No. 17/814,057.
Current Prosecution Status: A Restriction Requirement was mailed by the USPTO, identifying multiple distinct invention groups within the claims and requiring OWS to elect one group for continued prosecution. The original two-month shortened statutory period for responding to the Restriction Requirement expired on October 21, 2024. Recognizing the imminent expiration of this deadline, C&H contacted Sandra Koh by email on October 15, 2024, seeking emergency authorization to file an extension of time as an exception to the Project Lighthouse freeze. Sandra Koh authorized the extension by return email on the same date. On October 18, 2024, Peter Vassiliev filed a four-month extension of time at a cost of $2,560 (small entity rate), extending the response deadline by four months.
The Restriction Requirement identifies three distinct invention groups: (1) the electrode deposition process claims (Claims 1–8), (2) the electrode patterning and segmentation claims (Claims 9–15), and (3) the electrode impedance-tuning process claims (Claims 16–22). An election must be made to prosecute one group, with the remaining groups reserved for pursuit in one or more divisional applications (see B2 below).
Next Deadline: April 21, 2025 — Extended deadline for response to the Restriction Requirement.
Extendable? Limited. Under 37 C.F.R. § 1.136(a), up to five (5) months of total extension may be purchased for a Restriction Requirement response. Four months have already been purchased, leaving at most one (1) additional month of extension potentially available. The fee for a fifth-month extension would be $3,200 at the small entity rate. However, C&H recommends against reliance on this additional extension, both because of the escalating cost and because further delay compounds the prosecution timeline for B2 and the overall sub-family.
Consequence of Missing Deadline: The application will be considered abandoned under 35 U.S.C. § 133. Abandonment of B1 would result in the loss of all electrode fabrication process claims, covering OWS's proprietary manufacturing methods for segmented traveling-wave electrodes. Additionally, abandonment of B1 would foreclose the ability to file the B2 divisional application, since B2 is dependent on B1 as its parent and must be filed while B1 is still pending. The loss of both B1 and B2 would eliminate OWS's manufacturing process patent protection entirely.
Work Required: Response to a Restriction Requirement is a relatively straightforward procedural action. It involves: (i) analyzing the Examiner's restriction rationale, (ii) electing one of the identified invention groups for continued prosecution, (iii) reserving the right to prosecute the non-elected groups in one or more divisional applications, and (iv) optionally traversing (contesting) the Restriction Requirement if there are grounds to argue that the inventions are not patentably distinct. C&H estimates this response will require approximately 8–12 attorney hours.
Strategic Significance: High. The electrode fabrication process claims provide an independent basis for design-around protection and are commercially significant for OWS's manufacturing intellectual property. These claims operate at the method level and are complementary to the device-level claims in Sub-Family A, providing a layered IP strategy.
B2: U.S. Application No. 17/814,103 (Placeholder Divisional).
Current Prosecution Status: B2 is designated as a placeholder divisional application. The application number was reserved in the C&H docketing system on July 21, 2023, contemporaneously with the filing of B1, in anticipation that a Restriction Requirement would issue and divisional filings would be needed. The Restriction Requirement has now been received in B1, confirming the need for B2. However, the divisional application has not yet been formally filed with the USPTO. It will be prepared and filed upon completion of the election response in B1.
Under 35 U.S.C. § 121 and 37 C.F.R. § 1.53(b), a divisional application may be filed at any time while the parent application (B1) is pending. Critically, however, if B1 is abandoned — whether through failure to respond to the Restriction Requirement or otherwise — the right to file B2 as a divisional of B1 is forfeited. This creates a direct dependency between the B1 deadline and the availability of B2.
Next Deadline: No independent deadline exists. The timeline for B2 depends entirely on the response to the Restriction Requirement in B1 and the subsequent election of claims.
Consequence of B1 Abandonment on B2: If B1 is abandoned, the ability to file B2 as a divisional application is permanently lost.
Strategic Significance: Moderate. B2 will preserve claim scope for the non-elected invention groups from B1, ensuring that OWS does not forfeit patent protection for any of the three identified electrode fabrication process invention categories. Its significance is dependent on, and derivative of, the B1 prosecution.
B3: EP 23 741 682.3.
Current Prosecution Status: The European regional phase was entered on July 5, 2023. The Extended European Search Report ("EESR") was received from the EPO on November 17, 2023. The EESR identifies prior art references and includes the Examining Division's preliminary opinion on the patentability of the claims under Articles 52–56 of the European Patent Convention. Per EPO Rule 70a, the response deadline is six months from the date of deemed notification of the EESR, combined with the Rule 161/162 communications.
On November 30, 2023, Peter Vassiliev sent a status inquiry to Dr. Matthias Vogt at Breitenfeld & Vogt, confirming receipt of the EESR, reviewing the search report citations, and discussing the upcoming response deadline. Dr. Vogt responded on December 5, 2023, confirming the details and noting that the EESR raised objections that would require substantive claim amendments and arguments to address. No further substantive work has been performed since that date due to the Project Lighthouse freeze.
Next Deadline: May 17, 2025 — Six-month deadline to respond to the EESR.
Extendable? Limited. EPO practice does allow for limited extensions of time under certain circumstances, typically by one month upon filing a request for extension. However, EPO extensions are not automatically granted and involve procedural complications and additional fees. The EPO practice should not be relied upon as a safety net in the same manner as the more straightforward USPTO extension mechanism.
Consequence of Missing Deadline: The European application will be deemed withdrawn under the provisions of the European Patent Convention. This is an automatic consequence of failure to respond within the prescribed period, and while reinstatement (further processing or re-establishment of rights) may be available under certain conditions, such remedies are discretionary, involve significant fees, and are procedurally complex before the EPO. The practical consequence is the permanent loss of European patent protection for the electrode fabrication process and modulator architecture claims covered by B3.
Work Required: A substantive response to the EESR is required, including analysis of the cited prior art references, potential claim amendments to overcome the objections raised by the Examining Division, and preparation of arguments on patentability. This work will require close coordination between C&H and Breitenfeld & Vogt, as the response will be filed by the European associate on behalf of OWS. C&H will prepare the technical and legal analysis and draft the response, with B&V providing EPO procedural guidance, formal drafting in accordance with EPO conventions, and filing.
Estimated Cost: C&H attorney fees: 20–30 hours at blended discounted rates (~$11,250–$16,875). Breitenfeld & Vogt foreign associate fees: approximately €3,500–€5,000 (~$3,800–$5,400 at an approximate exchange rate of $1.08/€). EPO examination fee: approximately €580 (~$626) if not yet paid. Total estimated: approximately $15,000–$22,000.
Strategic Significance: High. The European market is significant for OWS's data-center interconnect technology. European patent rights are independently valuable for licensing, cross-licensing, and enforcement purposes, and the European patent can be validated in multiple EPC contracting states upon grant, providing broad territorial coverage across the European Union and other EPC member states.
B4: JP 2024-542197.
Current Prosecution Status: The Japanese national phase was entered on July 3, 2023. The application is currently awaiting the filing of an examination request, which is required to initiate substantive examination by the JPO. Under Japanese Patent Law, an examination request must be filed within three (3) years of the PCT international filing date (here, January 9, 2023). Per C&H's letter to Nakashima & Togawa dated September 20, 2023, the filing of the examination request was placed on hold pending further instructions. Nakashima & Togawa confirmed compliance with this instruction by email dated September 25, 2023 and continues to monitor the deadline.
Next Deadline: January 9, 2026 — Three-year deadline from the PCT international filing date (January 9, 2023) to file the examination request at the JPO.
Extendable? NO. The three-year deadline for filing an examination request is statutory under the Japanese Patent Act (Article 48-3) and is not extendable.
Consequence of Missing Deadline: The application will be deemed withdrawn under Japanese Patent Law. This results in the permanent loss of the right to obtain a Japanese patent from this application. While restoration of rights may be available under limited circumstances, the requirements are stringent and the outcome uncertain.
Work Required: The filing of an examination request is primarily an administrative action. It requires preparation of the examination request form, payment of the JPO examination request fee, and submission through Nakashima & Togawa. No substantive claim work is required at this stage, though OWS may wish to consider voluntary amendments in connection with the examination request to streamline prosecution.
Estimated Cost: JPO examination request fee: approximately ¥150,000–¥200,000 per application (~$1,000–$1,400 at current exchange rates). Nakashima & Togawa associate fees: approximately $1,500–$2,500. Total estimated: approximately $2,500–$3,900.
Strategic Significance: Moderate. Japan is a significant market for semiconductor and photonics intellectual property, and a number of OWS's customers and potential licensees are Japanese companies. However, given the current prioritization exercise, the Japanese applications represent a lower urgency than the U.S. and European filings.
C. Sub-Family C — Packaging & Thermal Management
Sub-Family C comprises three applications directed to OWS's innovations in packaging and thermal management for silicon-photonic modulator arrays. These applications cover the integration of thermal compensation structures, heat dissipation designs, and packaging configurations that are necessary for the reliable operation of OWS's high-bandwidth modulator products in data-center environments.
C1: U.S. Application No. 18/102,776.
Current Prosecution Status: C1 was filed on January 29, 2024, authorized under pre-freeze budget allocation as one of the final actions taken before the full effect of the Project Lighthouse freeze was felt on the patent prosecution docket. The filing was completed using work product that had been substantially prepared prior to August 2023. The application is currently pending before the USPTO and awaiting issuance of a first Office Action. Based on the filing date and current USPTO pendency statistics, we estimate the first Office Action will issue in approximately Q4 2025, though this estimate is subject to significant variability.
Next Deadline: No statutory deadline is currently pending. The next deadline will arise upon issuance of the first Office Action.
Consequence of Inaction: No immediate risk of loss or abandonment. C1 will remain pending and in the examination queue until acted upon by the Examiner.
Strategic Significance: Moderate. C1 covers packaging and thermal management innovations that complement the core modulator (Sub-Family A) and electrode fabrication (Sub-Family B) claims, providing a comprehensive layered IP strategy across the full OWS product architecture.
C2: EP 23 765 901.7.
Current Prosecution Status: The European regional phase was entered on July 8, 2023. A Rule 161/162 communication was received from the EPO, and C&H (Peter Vassiliev, in coordination with Dr. Vogt at Breitenfeld & Vogt) filed a timely response on September 1, 2023. The application is now awaiting issuance of the Extended European Search Report ("EESR"). Based on typical EPO processing timelines, we estimate the EESR will issue in approximately mid-2025, after which a six-month response period will commence.
Next Deadline: No current statutory deadline is pending. The next deadline will arise upon issuance of the EESR, expected approximately mid-2025.
Consequence of Inaction: No immediate risk. The application remains pending before the EPO and will not lapse or be withdrawn absent a missed deadline. However, once the EESR issues, prompt attention will be required to ensure a timely response within the six-month period.
Strategic Significance: Moderate. C2 extends OWS's European patent protection to cover the packaging and thermal management aspects of the technology, complementing the device and process claims pursued in B3.
C3: JP 2024-542305.
Current Prosecution Status: The Japanese national phase was entered on July 8, 2023. Like B4, C3 is awaiting the filing of an examination request. Per C&H's letter to Nakashima & Togawa dated September 20, 2023, the examination request filing has been placed on hold pending further instructions from C&H. Nakashima & Togawa is monitoring the deadline.
Next Deadline: January 9, 2026 — Three-year deadline from the PCT international filing date (January 9, 2023) to file the examination request at the JPO. This is the same deadline that applies to B4.
Extendable? NO. The three-year deadline is statutory under the Japanese Patent Act and is not extendable.
Consequence of Missing Deadline: The application will be deemed withdrawn under Japanese Patent Law, resulting in the permanent loss of the right to obtain a Japanese patent from this application for the packaging and thermal management technology.
Work Required: Same as B4 — primarily administrative. Preparation and filing of the examination request form through Nakashima & Togawa, together with payment of the JPO examination request fee.
Estimated Cost: JPO examination request fee: approximately ¥150,000–¥200,000 (~$1,000–$1,400). Nakashima & Togawa associate fees: approximately $1,500–$2,500. Total estimated: approximately $2,500–$3,900.
Strategic Significance: Moderate. C3 extends OWS's Japanese patent protection to cover the packaging and thermal management technology. Same commercial considerations as B4.
IV. Critical Deadlines — Triage Summary (Ranked by Urgency)
Priority Classification System
To facilitate rapid assessment and decision-making, we have classified each pending deadline using a traffic-light risk system:
• RED — Immediate action required. The deadline is imminent (fewer than 100 days remaining), and no or very limited extensions of time are available. Failure to act will result in irrevocable loss of patent rights. Budget authorization and substantive work must commence immediately.
• YELLOW — Deadline approaching within six months. Action planning must begin promptly, and budget authorization should be obtained on a near-term basis. Extensions may be available in limited circumstances but should not be relied upon. Failure to act will result in significant loss of patent rights.
• GREEN — Deadline more than six months out. Monitoring status is sufficient for now, but the deadline must be actively tracked and addressed well in advance of expiration. Client direction should be obtained within the coming months.
Consolidated Triage Table
Detailed Triage Analysis by Priority
Priority 1 — RED: A1 (U.S. Application No. 17/672,204) — March 9, 2025. Deadline: March 9, 2025 — 53 days from the date of this memorandum.
Nature of Deadline: Response to the non-final Office Action mailed March 9, 2024. The original shortened statutory period was three (3) months. A two-month extension of time was purchased on September 6, 2023 (fee: $640). The six-month absolute statutory maximum response period under 35 U.S.C. § 133 and 37 C.F.R. § 1.136(a) expires on March 9, 2025. All five months of available extension have been consumed.
Extendable? NO. This deadline is absolute and non-extendable. All extensions of time have been exhausted. No further extension of time is available under any provision of the patent rules. There is no procedural mechanism to extend this deadline by even a single day.
Consequence of Missing Deadline: The application will be considered abandoned under 35 U.S.C. § 133. This constitutes the permanent loss of OWS's foundational U.S. patent application covering the core modulator design-around claims, including the tapered impedance-matching electrode feature. As detailed throughout this memorandum:
(a) Abandonment of A1 eliminates OWS's ability to secure patent claims covering the tapered impedance-matching design-around feature that distinguishes OWS's modulator products from Pinnacle Optics' blocking patents (U.S. Patent Nos. 10,823,417 and 11,105,662).
(b) Per C&H's FTO analysis (October 14, 2022), OWS's commercial products face a "moderate-to-high" risk of infringement of Pinnacle's '417 patent absent the design-around features covered by A1's pending claims.
(c) Loss of A1 materially undermines OWS's defensive patent position, negotiating leverage in potential licensing discussions with Pinnacle, and overall portfolio value. The Graystone valuation attributed $12.2 million to the pending application family, of which A1 represents the most significant individual component.
(d) A petition to revive under 37 C.F.R. § 1.137 is theoretically available but is discretionary, procedurally complex, expensive, and uncertain in outcome — particularly where the delay resulted from a deliberate business decision rather than inadvertent error.
Work Required to Address: The following steps are required to meet the March 9, 2025 deadline:
1. Retrieve and review the incomplete draft Office Action response prepared by Christy Bauer through August 2023.
2. Update the claim amendment analysis in light of any intervening developments (including any newly published Pinnacle Optics patent applications or grants).
3. Finalize the proposed claim amendments emphasizing the tapered impedance-matching feature.
4. Complete the remarks and arguments section addressing the Examiner's § 103 obviousness rejections.
5. Determine whether a Request for Continued Examination ("RCE") is strategically advisable (e.g., if new claims or evidence are to be introduced that would not be appropriate in a response to the non-final Office Action).
6. Partner review by Catherine Bloom and finalization.
7. Quality control review, preparation of formal papers, and electronic filing with the USPTO.
Estimated Cost: Approximately 40–55 attorney hours (primarily Christy Bauer at 30–40 hours and Catherine Bloom at 10–15 hours) at blended discounted rates, totaling approximately $22,000–$30,000 in C&H attorney fees. If an RCE is filed, the USPTO fee would be approximately $2,000 (small entity rate). If no RCE is needed, the government fee for a response to a non-final Office Action is $0. Total estimated cost: $22,000–$32,000.
Recommendation: Immediate action required. This deadline cannot be missed under any circumstances or any budget scenario. We urge OWS to authorize the commencement of work on this response within one week of receipt of this memorandum. C&H is prepared to re-engage on an emergency basis immediately upon receiving authorization and can begin work the same day authorization is received.
Priority 2 — RED: B1 (U.S. Application No. 17/814,057) — April 21, 2025. Deadline: April 21, 2025 — 96 days from the date of this memorandum.
Nature of Deadline: Response to the Restriction Requirement mailed by the USPTO. The original two-month shortened statutory period expired October 21, 2024. A four-month extension of time was purchased on October 18, 2024 (fee: $2,560), extending the deadline by four months.
Extendable? Limited. Under 37 C.F.R. § 1.136(a), a total of five (5) months of extension may be purchased for the response to a Restriction Requirement. Four months have already been purchased. One additional month remains available, at a cost of $3,200 (small entity rate for a five-month extension). If purchased, this would extend the deadline to approximately May 21, 2025. However, C&H recommends against reliance on this additional month except as a last resort, as it increases costs and delays the initiation of substantive prosecution in B1 as well as the filing of divisional B2.
Consequence of Missing Deadline: Abandonment of B1 and permanent forfeiture of the electrode fabrication process claims. Additionally, as discussed in Section III.B (B2) above, abandonment of B1 forecloses the ability to file the B2 divisional application, resulting in the loss of all three invention groups identified in the Restriction Requirement.
Work Required: The response to a Restriction Requirement is a relatively focused procedural exercise. C&H must:
1. Analyze the Examiner's restriction rationale and determine whether traversal (contestation) is warranted.
2. Consult with OWS engineering personnel (Dr. Strickland and/or Dr. Chen) to determine which invention group is of highest commercial priority for initial prosecution in B1.
3. Prepare and file the election response, electing the chosen invention group and reserving the remaining groups for divisional prosecution.
4. If traversal is appropriate, prepare arguments explaining why the inventions are not patentably distinct.
Estimated Cost: Approximately 8–12 attorney hours (primarily Christy Bauer and/or Peter Vassiliev), totaling approximately $4,500–$6,750 in C&H attorney fees. No additional USPTO fee is required for the restriction response itself. Following the election, the preparation and filing of the B2 divisional application will incur additional costs estimated at approximately $8,000–$12,000, but this is a separate action item.
Recommendation: Urgent action required. This is the second-highest priority deadline in the docket. Authorization should be obtained promptly, and C&H should begin the restriction analysis and inventor consultation within the next 30 days. The additional one-month extension to May 21, 2025 is available as a contingency but should not be treated as the default plan.
Priority 3 — YELLOW: B3 (EP 23 741 682.3) — May 17, 2025. Deadline: May 17, 2025 — 122 days from the date of this memorandum.