G 'R/: eFFIGE ' t) , : DI:r.

O DRT
AT RQANQKE, VA
FltEn
MAY 9 2211
JULIA C, D -ERK
BY:
DEP .R!
IN THE UNITED STATES DISTRICT COURT
FOR THE W ESTERN DISTRICT OF VIRGINIA
Roanoke Division
NUVOTRONICS, LLC, :
Plaintiff,
(zooztlz Civil Action No.
LUXTERA, INC.,
Defendant. - :
COM PLAINT
Plaintiff, Nuvotronics, LLC CsNuvotronics'' or ttplaintiff), by its undersigned counsel,
submits this Complaint against Defendant Luxtera, lnc. (ilauxtera'') and as grounds therefore,
states as follows:
NATURE OF COM PLAINT
This is a complaint for correction of inventorship under 35 U.S.C. j 256(b). 1.
Luxtera violated a non-disclosure agreement between it and Nuvotronics by m isappropriating,
for their own use and benefit, confidential information that was provided to them by
Nuvotronics, and its predecessor-in-interest, Rohm and Haas Electronic M aterials, LLC
(IRHEM''). pursuant to the non-disclosure agreement. Rather than follow the terms of the non-
disclosure agreement, Luxtera filed multiple United States Patent Applications that incorporated
Nuvotronics' inventive and confidential information, which was conceived of and reduced to
practice by Nuvotronics' employees. However, Luxtera failed to list any of Nuvotronics'
employees as inventors on its United States Patent Applications or the U.S. Patents that resulted
therefrom and which included Nuvotronics' inventive, confidential information. Accordingly,
the Nuvotronics' employees who conceived of, and reduced to practice, information disclosed
and claimed in Luxtera's United States Patents must be named as inventors of the same under 35
U.S.C. j 256(b).
PARTIES
2. Plaintiff, Nuvotronics, is a Virginia limited liability company with its principal
offices located in Radford, Virginia. Nuvotronics also has offices and a manufacturing facility
located in Durham, North Carolina, and small offices in W oburn, M assachusetts and Camarillo,
California. Nuvotronics is a Ieading innovator and manufacturer of micro-scale communications
hardware and defense technology.
Defendant, Luxtera, is a Delaware corporation with its principal ofsces located in
Carlsbad, California. Luxtera utilizes silicon photonics technology to manufacture electro-
optical systems.
JURISDICTION AND VENUE
4. This Court has original and exclusive subject matterjurisdiction over this action
under 28 U.S.C. jj 1331 and 1338(a).
5. This Court has personal jurisdiction over Luxtera by virtue of their transacting
business in the Commonwealth of Virginia and/or consenting to suit in the Commonwealth of
Virginia.
6. Venue is proper in this district pursuant to 28 U.S.C. j l 391 because a substantial
part of the events or omissions on which the claims are based occurred in the W estern District of
Virginia.
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FACTUAL BACKGROUND
On April 9, 2007, RHEM , Nuvotronics' predecessor-in-interest, entered into a
Ststandard Confidential lnformation Disclosure Agreement'' with Luxtera (the t%DA'').
Pursuant to the NDA, RHEM and Luxtera agreed to exchange information related
to RHEM'S Si-pak optical packaging technology (the lsi-pak Pod'' or the Gt-rechnology'') and
business information including, but not limited to, specifications, designs, part drawings,
processes, testing and manufacturing methods, samples and vendors (collectively the
Stconfidential lnformation'').
9. David W . Sherrer, Carl E. Gaebe, James W . Getz, Larry J. Rasnake, and
W illiam K. Hogan conceived of, designed, and reduced to practice the Technology and the
inventions related thereto.
10. The Si-pak Pod is a packaged semiconductor laser, which allows cost effective,
high pedbrmance and highly miniaturized laser integration into optoelectronic assemblies and
integrated optical devices, including silicon photonics. This Technology allows a light-emitting
laser chip to electronically and optically interface properly with optoelectronics assemblies, such
as planar lightwave circuits ($TLC'') and/or photonic integrated devices CTIC''). The
Confidential lnformation identified in the NDA includes, but is not limited to, data, know-how,
formulas, compositions, processes, methods, documents, designs, sketches, photographs, plans,
graphs, drawings, specifications, equipment, samples, reports, customer Iists, pricing
information, studies, findings, inventions, and ideas related to the Technology.
The Confidential information identified in the NDA includes, but is not limited to,
dal, know-how, formulas, compositions, processes, documents, designs, sketches, photographs,
plans, graphs, drawings, speciscations, equipment, samples, reports, customer lists, pricing
information, studies, findings, inventions, and ideas related to the Technology.
l2. The NDA prohibits the recipient of any Confidential lnformation from disclosing
the Confidential lnformation to a third party or from using the Confidential lnformation except
for the purpose set forth in the NDA, which is limited to t(a potential business relationship
whereby RHEM would supply to glwuxtera! packaged lasers based on RHEM'S Si-pak packaging
technology.''
13. The NDA specifically provides that Etgtlhis Agreement does not grant any right to
Iicense, expressed or implied, to use Confidential lnformation except for the purpose of this
Agreement, nor any right or license, express or implied, under any patent, nor any right to
purchase, distribute or sell any product''
14. The NDA further provides that fonfidential Information shall not be deemed to
be within the foregoing exceptions merely because it is (1) specific and embraced by more
general information in the public domain or recipient's possession or (2) a combination which
can be pieced together to reconstruct the Confidential lnformation from multiple sources, none of
which shows the whole combination, its principal of operation and method of use.''
15. RHEM and Luxtera amended the NDA on M arch 28, 2008 to extend the
Disclosure Deadline until April 8, 2009 and to extend the Termination Date until April 8, 2014
(the GtAumendment').
16. W ith the NDA in place, RHEM , and then Nuvotronics, worked diligently and at
considerable expense over the next approximately twentp months to adapt the Technology for
Luxtera's specific uses and applications. During this time, RHEM and later Nuvotronics shared
Confidential lnformation with Luxtera through the transfer of documents, oral conversations,
4
visual presentations, manufacturing line tours and audits, detailed manufacturing process
reviews, design improvement disclosures, on-site visits, and other means.
On or about October 22, 2007, RHEM and Luxtera entered into an NRE Service
Agreement CtNRE Agreemenf), which was specifkally subject to the NDA. Pursuant to the
NRE Agreement, RHEM developed and delivered 200 prototype Si-pak Pods to Luxtera that
were specifically developed and modified for Luxtera's application.
18. On July 8, 2008, Nuvotronics acquired all of RHEM 'S right, title, and interest in,
among other assets, the Technology as well as RHEM 'S rights. duties, and obligations under the
NDA and NRE Agreements.
19. On July 9, 2008, Luxtera filed U.S. Provisional Patent Application No.
61/079,358 (the 6$ 1358 application'), which included and disclosed the Technology.
20. On July 9, 2009, Luxtera filed U.S. Patent Application No. 12/500,465, now U.S.
Patent No. 8,168,939 (the dt 1939 patenf), which claimed the benefit of the 1358 application and,
which included, disclosed, and claimed the Technology at least in issued claims 1-13, 17-27, 31-
4 1, and 45-54 of the 1939 patent.
On April 25, 2012, Luxtera filed U.S. Patent Application No. 13/455,641, now
U.S. Patent No. 8,440,989 (the 1 :989 patenf'), as a Continuation Application of the $939 patent,
which included, disclosed, and claimed the Technology at Ieast in issued claims l-1 5, 19-31, 35-
48, and 52-63 of the 1989 patent.
22. Each of the 6939 patent and 1989 patent list inventors M ichael M ack, M ark
Peterson, Steffen Gloeckner, Adithyaram Narasimha, Roger Koumans, and Peter De Dobbelaere.
However, each of the 1939 patent and 1989 patent fail to list certain inventors of the technology.
Specifically, the 1939 patent and :989 patent do not list David W . Sherrer, Carl E. Gaebe,
5
James W . Getz, Lany J. Rasnake, or W illiam K. Hogan, who conceived of and reduced to
practice the Technology and the inventions related thereto.
23. On M ay 8, 2014, David W . Sherrer assigned all right, title, and interest in the :939
patent and 4989 patent to Nuvotronics.
COUNT 1: CORRECTION OF INVENTO- RSHIP - U.S. PAT. NO. 8.168.939
24. Paragraphs 1 to 23 are incorporated by reference herein.
The cause of action in Count l arises under Section 256 of the Patent Act, 35
U.S.C. j 256(b).
26. The 1939 patent lists inventors M ichael M ack, M ark Peterson, Steffen Gloeckner,
Adithyaram Narasimha, Roger Koumans, and Peter De Dobblacre,
27. ln fact, David W . Sherrer, Carl E. Gaebe, James W . Getz, Larry J. Rasnake, and
William K. Hogan (collectively, the tNuvotronics lnventors'') contributed to the subject matter
disclosed and claimed in the :939 patent. As described above, the Nuvotronics lnventors are
inventors of at least claims l -13, 17-27, 31-41, and 45-54 of the 1939 patent. For example,
David W . Sherrer met with and provided infonnation related to the Technology to Luxtera on
multiple occurrences under the NDA and NRE. The Nuvotronics lnventors conceived of,
reduced to practice, and disclosed to Luxtera prior to July 9, 2008 the Technology that was later
incorporated by Luxtera into the $939 patent specitication and claim s.
28. For example, the Nuvotronics lnventors conceived of, reduced to practice, and
disclosed to Luxtera prior to July 9, 2008 at least the following features in claim 1 of the $939
patent:
a light source assembly affixed to a photonically enabled chip, said light source
assembly comprising a laser, a microlens, a reciprocal polarization rotator, a non-reciprocal
6
polarization rotator, a turning mirror, and an optical bench, said light source assembly being
operable to: generate an optical signal utilizing said laser; focus said optical signal utilizing said
microlens; rotate a polarization of said optical signal utilizing said reciprocal polarization rotator;
reflect said optical signal at an angle defined by said turning mirror; and transmit said retlected
optical signal out of said light source assembly to said photonically enabled chip.
29. The omission of the Nuvotronics lnventors as inventors of the $939 patent was
eR oneous.
30. Nuvotronics has ownership rights in the (939 patent by virtue of David W .
Sherrer's assignment agreement, executed May 8, 2014, which transferred all right, title, and
interest in the :939 patent to Nuvotronics.
31 . The omission of the Nuvotronics Inventors form the (939 patent has injured and
will injure Nuvotronics by depriving it of an ownership interest or financial stake in the patent,
which can be redressed by correction of inventorship.
32. ln addition, Nuvotronics has a financial interest in correcting inventorship. As a
rightful assignee of the 6939 patent, Nuvotronics has a vested interest in preventing its patent
rights from being extinguished by incorrect inventorship. M ore specifically, if inventorship is
not corrected, the patent is at risk for being proven invalid. lf that were to occur, Nuvotronics
would lose its rights to enforce the patent against infringers. Nuvotronics' success is built on the
unique aspects of its Proprietary lnfonnation, including its intellectual property. Nuvotronics'
Proprietary lnformation and Intellectual Property provide Nuvotronics with a business advantage
over its competition. For example, Nuvotronics' inability to properly assert a Nuvotronics patent
would allow Nuvotronics Proprietary Information and lntellectual Property disclosed in the :939
patent to be freely used by others.
7
At least David W . Sherrer has notice of and has consented to this action to correct
inventorship.
Nuvotronics has standing and is otherwise entitled to have the inventorship of the
$939 patent corrected to reflect that the Nuvotronics lnventors are inventors of the subject matter
claimed therein.
COIJNT 11: CORRECTION OF INVENTORSHIP - U.S. PAT. NO. 8.440.989
35. Paragraphs 1 to 34 are incorporated by reference herein.
36. The cause of action in Count 11 arises under Section 256 of the Patent Act, 35
U.S.C. j 256(b).
The 6989 patent lists inventors M ichael M ack, M ark Peterson, Steffen Gloeckner,
Adithyaram Narasimha, Roger Koumans, and Peter De Dobblacre.
38. ln fact, David W . Sherrer, Carl E. Gaebe, James W . Getz, Larry J. Rasnake, and
William K. Hogan (collectively, the GENuvotronics lnventors'') also contributed to the subject
matter disclosed and claimed in the (989 patent. As described above, the Nuvotronics lnventors
are inventors of at least one of claims 1-l 5, 19-31, 35-48, and 52-63 of the 6989 patent. For
example, David W . Sherrer met with and provided information related to the Technology to
Luxtera on multiple occurrences under the NDA and NRE. The Nuvotronics lnventors
conceived ofs reduced to practice, and disclosed to Luxtera prior to July 9, 2008 the Technology
that was later incorporated by Luxtera into the (989 patent specitk ation and claims.
39. For example, the Nuvotronics Inventors conceived otl reduced to practice, and
disclosed to Luxtera prior to July 9, 2008 at least the following features in claim l of the :989
patent:
8
a light source assembly operably coupled to a photonically enabled chip, said light source
assembly comprising a laser, a microlens, a turning mirror, and an optical bench. said light
source assembly being operable to: generate an optical signal utilizing said laser; focus said
optical signal utilizing said microlens; and reflect said optical signal at an angle defined by said
turning mirror and transmit said retlected optical signal out of said light source assembly to said
photonically enabled chip.
40. The omission of the Nuvotronics lnventors as inventors of the :989 patent was
econeous.
4 l . Nuvotronics has ownership rights in the :989 patent by virtue of David W .
Sherrer's assignment agreement, executed M ay 8, 2014, which transferred al1 right title, and
interest in the :989 patent to Nuvotronics.
42. The omission of the Nuvotronics Inventors form the :989 patent has injured and
will injure Nuvotronics by depriving it of an ownership interest or financial stake in the patent,
which can be redressed by correction of inventorship.
43. In addition, Nuvotronics has a financial interest in correcting inventorship. As a
rightful assignee of the :989 patent, Nuvotronics has a vested interest in preventing its patent
rights from being extinguished by incorrect inventorship. More specitkally, if inventorship is
not corrected the patent is at risk for being proven invalid. If that were to occur, Nuvotronics
would lose its rights to enforce the patent against infringers. Nuvotronics' success is built on the
unique aspects of its Proprietary Information, including its intellectual property. Nuvotronics'
Proprietary Information and lntellectual Property provide Nuvotronics with a business advantage
over its competition. For example, Nuvotronics' inability to properly assert a Nuvotronics patent
9
would allow Nuvotronics Proprietary lnformation and lntellectual Property disclosed in the 1939
patent to be freely used by others.
44. At least David W . Sherrer has notice of and has consented to this action to correct
inventorship.
45. Nuvotronics has standing and is otherwise entitled to have the inventorship of the
1989 patent corrected to reflect that the Nuvotronics lnventors are inventors of the subject matter
claimed therein.
PRAYER FOR RELIEF
W HEREFORE, Plaintiff Nuvotronics requests relief against Defendant Luxtera as
follows'.
A. An order correcting, or requiring Luxtera to correct, inventorship with the United
States Patent and Trademark Office to list David W . Sherrer, Carl E. Gaebe, James W . Getz,
Larry J. Rasnake, and W illiam K. Hogan as inventors of U.S. Patent No. 8,168,939.
B. An order correcting, or requiring Luxtera to correct, inventorship with the United
States Patent and Trademark Office to list David W . Sherrer, Carl E. Gaebe, James W . Getz,
Larry J. Rasnake, and W illiam K. Hogan as inventors of U.S. Patent No. 8,440,989.
C. Such further and other relief as the Court may deem just and appropriate.
JURY DEM AND
Nuvotronics hereby demands a trial byjury on aIl issues triable to ajury.
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Respectfully Submitted,
NUVOTRONICS, LLC
By: s/ Brian S. W heeler
Of Counsel
James K. Cowan, Jr. (VSB No. 37163)
Brian S. Wheeler (VSB No. 74248)
Cowanperry, PC
202 South Main Street, Suite 202
Blacksburg, Virginia 24060
Telephone (540) 443-2850
Facsimile (888) 755-1450
jcowan@cowanperry.com
bwheeler@cowanperry.com
Counselfor Plaint#