CLERK: OFFICE .

U , S Dls; COUR7'
AT ROANOKE, VA
FU D
MAt 9 9 2211
JULIA C D , CLERK
BY;
D
IN THE UNITED STATES DISTRICT COURT
FOR THE W ESTERN DISTRICT OF VIRGINIA
Roanoke Division
NUVOTRONICS, LLC, :
Plaintiff, :
civil Aaionxo. 7/ JJ z,/..s
LUXTEM , INC.,
Defndant. - -
:
COM PLAINT FOR PATENT INFRINGEM ENT AND DAM AGES
Plaintiff, Nuvotronics, LLC (ltNuvotronics'' or GEplaintiff), by its undersigned counsel,
files this patent infringement action against Defendant Luxtera, Inc. (ddlwuxtera'' or Defendanf')
and as grounds therefore, states as follows'.
NATURE OF ACTION
This is a civil action for patent infringement that arises under the federal patent
laws of the United States, 35 U.S.C. j 1, et seq., for infringement by Defendant of a patent
owned by Nuvotronics.
PARTIES
Plaintiff, Nuvotronics, is a Virginia Iimited liability company with its
headquarters located in Radford, Virginia. Nuvotronics also has offices and a manufacturing
facility located in Durham, North Carolina, and small oftkes in W oburn, M assachusetts and
Camarillo, California. Nuvotronics is a leading innovator and manufacturer of micro-scale
communications hardware and defense technology.
Defendant, Luxtera, is a Delaware corporation w'itll its principal offices located in
Carlsbad, California. Luxtera utilizes silicon photonics technology to manufacture electro-
optical systems.
JURISDICTION AN
-
D VENUE
This Court has original and exclusive subject matterjurisdiction over this action 4.
under 28 U.S.C. jj 1331 and 1338(a).
This Court has personal jurisdiction over Defendant by virtue of their transacting
business in the Commonwealth of Virginia and/or their previously consenting to suit within the
Commonwea1th of Virginia.
6. Venue is proper in this district pursuant to 28 U.S.C. j 1391(c).
THE PATENT-IN-SUIT
Nuvotronics is the owner by assignment of all right, title, and interest in and to
U.S. Patent No. 8,399,897 (the $11897 patenf), including the right to sue for past, present, and
future damages. Accordingly, Nuvotronics has standing to bring this action for patent
infringement. The $897 patent was duly and legally issued by the U.S. Patent and Trademark
Office on M arch 19, 2013, is in force, and is entitled r ptical Device Package.'' A true and
correct copy of the 1897 patent is attached as Exhibit A.
BACKGROUND.
8. ln March 2007, Luxtera employee Michael Mack (ttMack'') met Nuvotronics'
President, David Sherrer tdsherrer'), who was at that time the Director of Research and Product
Development for RHEM , at the Optical Fiber Communication Conference and Exposition held
in Anaheim, California. M ack told Sherrer that Luxtera needed a companion light source to use
with its silicon photonics semiconductor chip in a future Luxtera active optical cable product and
wanted to learn more about RHEM 'S Si-pak* technology.
RHEM 'S Si-pak technology consisted of a silicon-packaged hermetic
semiconductor laser, which enabled cost effective, high performance and highly miniaturized
laser integration into optoelectronic assemblies and integrated optical devices.
10. Effective April 9, 2007, Nuvotronics and Luxtera entered into a Standard
Confidential Information Disclosure Agreement (the ECNDA'') with Luxtera to allow the parties to
exchange information relating to a potential business relationship whereby RHEM (Nuvotronics'
predecessor-in-interest) would supply to Luxtera packaged Iasers based on RHEM 'S Si-pak
packaging technology. The NDA was amended on M arch 28, 2008.
1 1. Proprietary information and certain trade secrets of Nuvotronics were shared with
Luxtera under the NDA with the goal of designing and manufacturing a part to meet Luxtera's
needs.
On or about October 22, 2007, RHEM and Luxtera entered into an NRE Service
Agreement (the CCNRE Agreemenf), which was specifically subject to the NDA.
On July 8, 2008, Nuvotronics acquired all of RHEM 'S right, title and interest in,
among other assets, the Si-pak technology as well as RHEM 'S rights, duties and obligations
under the NDA and NRE Agreements.
14. ln early 2009, the business relationship between Nuvotronics and Luxtera ended.
l5. Remarkably, within a few months after the relationship, Luxtera began marketing
a silicon-packaged laser light source infringing on Nuvotronics' (897 patent.
CLAIM 1: PATENT INFRINGEM ENT
1 6. Nuvotronics repeats and realleges each of the allegations of paragraphs 1 through
7 as if set forth fully herein.
17. Defendant has and will continue to manufacture, or have manufactured for it, and
uses, or actively induces others to use, and offers for sale, devices and systems that include
optical device packages as described and claimed in the :897 patent including, but not limited to,
its manufacture and sale of its CM OS chipsets, which is a silicon transceiver integrated circuit
with a companion light source (the tfhipsets').
18. Defendant is knowingly and directly infringing, either literally or under the
Doctrine of Equivalents, within this district and elsewhere within the United States, one or more
claims of the 1897 patent in violation of 35 U.S.C j 271 through the manufacture, use, sale or
offer for sale of products, devices, systems, and methods that infringe the 1897 patent, including,
but not limited to, Defendant's Chipsets. Defendant's infringement is direct, as well as
contributory. Additionally, Defendant is actively inducing infringement of the (897 patent by
others, all without leave or license from Nuvotronics to the substantial damage of Nuvotronics.
Defendant's acts of infringement have been, and will continue to be, wanton and willful.
l9. Defendant's infringing activities have damaged and continue to damage
Nuvotronics. Upon information and belief, Defendant will continue to infringe upon the 1897
patent causing harm to Nuvotronics, unless Defendant's infringing activities complained of
herein are preliminarily and permanently enjoined by this Court.
PRAYER FOR RELIEF
W HEREFORE, Plaintiff Nuvotronics requests relief against Defendant Luxtera as
follows-.
That U.S. Patent No. 8,399,897 be adjudged infringed by Defendant and that the
infringement be held to be willful;
B. That Nuvotronics be awarded compensatory damages for past infringement by
Defendant in an amount no Iess than a reasonable royalty, in a sum to be determined at trial,
together with interests and costs under 35 U.S.C. j 284;
That Nuvotronics be awarded increased damages under 35 U.S.C. j 284,.
D. That Defendant, its officers, agents, servants, employees, attorneys, successors,
assigns, and other persons in active concert or participation with them be preliminarily and
permanently enjoined from any further acts of infringement (whether direct, contributory, or by
inducement) of the $897 patent;
E. That Defendant be ordered to deliver to Nuvotronics for destruction all infringing
products and systems in their possession;
F. That this case be declared an exceptional case under 35 U.S.C. j 285, and that
Nuvotronics be awarded its atlorney fees incurred in this action;
For an award to Nuvotronics of costs of this action, interest on the award, and
other charges to the maximum extent permitted; and
For such further and other relief as the Court may deem just and appropriate.
JURY DEM AND
Nuvotronics hereby demands a trial by jury on aII issues triable to ajury.
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 M ain Street, Suite 202
Blacksburg, Virginia 24060
Telephone (540) 443-2850
Facsimile (888) 755-1450
jcowan@cowanperry.com
bwheeler@cowanpeny.com
Counselfor Plaint#
6