Cambridge Industries USA, Inc. v. Applied Optoelectronics, Inc.

Applied Optoelectronics, Inc. (AOI), a prominent operating company based in Sugar Land, Texas, specializing in the design, development, and manufacturing of fiber-optic networking products, initiated a patent infringement lawsuit against Cambridge Industries USA, Inc. (CIG USA). CIG USA, a Santa Clara, California-headquartered subsidiary of a global technology company, operates in the broadband, wireless, and optical module technologies sector, providing high-speed optical module products and connectivity solutions. The underlying litigation, filed in the U.S. District Court for the Northern District of California (Case No. 5:24-cv-01010), alleges that CIG USA's 100G and 400G optical transceiver modules infringe on multiple patents held by AOI.

In response to AOI's infringement claims, Cambridge Industries USA, Inc. filed several petitions for inter partes review (IPR) with the Patent Trial and Appeal Board (PTAB), including IPR2025-00435, challenging the validity of U.S. Patent No. 10,042,116. U.S. Patent No. 10,042,116 is generally related to optical transceiver modules, a critical component in high-speed data transmission within internet data centers, telecom, and cable broadband networks. The specific technical details of the patent focus on aspects that allow for efficient and reliable optical signal conversion and transmission.

The PTAB case, IPR2025-00435, was notable for its procedural outcome: it was "Not Instituted" on discretionary grounds by the USPTO Director. The Director's decision cited the "settled expectations" doctrine, noting that U.S. Patent No. 10,042,116 had been in force for seven years. This discretionary denial, occurring in June 2025, reflects a significant shift in PTAB practice where the age of a patent and the existence of parallel district court litigation can lead to a refusal to institute IPR, even if the merits of the invalidity challenge might otherwise be strong. The decision underscores the USPTO Director's broad discretion and the evolving landscape for challenging patents, particularly those already subject to infringement lawsuits in venues like the Northern District of California, a key forum for complex technology disputes.

The inter partes review (IPR) proceeding IPR2025-00435, involving Cambridge Industries USA, Inc. as Petitioner and Applied Optoelectronics, Inc. as Patent Owner for U.S. Patent No. 10,042,116, did not proceed to institution on procedural grounds.

Here are the key legal developments and outcomes:

• Underlying District Court Litigation (February 2024): Applied Optoelectronics, Inc. filed a patent infringement lawsuit against Cambridge Industries USA, Inc. in the Northern District of California. This litigation asserted several patents, including U.S. Patent No. 10,042,116. At the time of the IPR decision, there was no scheduled trial date, and a planned Markman hearing had been vacated.
• IPR Petition Filing (2025-01-17): Cambridge Industries USA, Inc. filed a petition for Inter Partes Review (IPR2025-00435) challenging U.S. Patent No. 10,042,116. This was one of five IPR petitions filed by Cambridge against Applied Optoelectronics' patents.
• USPTO Policy Change (February-March 2025): At the time Cambridge filed its petitions, interim USPTO guidance (known as the "Vidal Memo") generally disfavored discretionary denial of IPR institution in cases with parallel district court litigation if the petitioner stipulated not to pursue the same grounds in court. Cambridge provided such a stipulation. However, this guidance was rescinded on February 28, 2025. Subsequently, on March 26, 2025, new interim guidance was issued by the Acting Director, Coke Morgan Stewart, introducing new considerations for discretionary denials, notably the "settled expectations" of the patent owner based on the patent's time in force.
• Request for Discretionary Denial (April 2025): Applied Optoelectronics, Inc. filed a request for discretionary denial of institution, citing these new policy considerations.
• PTAB Non-Institution Decision (2025-06-27): The Patent Trial and Appeal Board (PTAB) issued a Director's Discretionary Decision denying institution of IPR2025-00435. The decision was based on procedural grounds, specifically the "settled expectations" factor. The Board noted that U.S. Patent No. 10,042,116 had been in force for seven years, which strengthened the patent owner's settled expectations. This decision was part of a broader trend of discretionary denials by the Director based on the age of the challenged patents.
• Federal Circuit Mandamus Petition (2025-12-09): Cambridge Industries USA, Inc. filed a petition for a writ of mandamus (Case: 26-101) with the U.S. Court of Appeals for the Federal Circuit, seeking to compel the USPTO to reconsider its non-institution decisions for IPR2025-00433 and IPR2025-00435. The Federal Circuit denied the mandamus petition on December 9, 2025, affirming that IPR institution decisions, particularly those based on discretionary factors, are generally not subject to judicial review under 35 U.S.C. § 314(d). The Federal Circuit did not rule on the merits of the "settled expectations" factor itself.

Cambridge Industries USA, Inc. was represented by the following counsel in IPR2025-00435:

• Nicola Anthony Pisano

  • Role: Likely lead counsel, as his name is associated with the notice of IPR filings.
  • Firm: Eversheds Sutherland (US) LLP
  • Office Location: While not explicitly stated for Pisano in the search results, Eversheds Sutherland (US) LLP has numerous offices globally. Further investigation would be needed to pinpoint his primary office, but the firm has a strong presence in intellectual property and patent litigation.
  • Note: Mr. Pisano filed the notice with the district court regarding the IPR petitions, indicating his involvement on behalf of Cambridge Industries USA, Inc.

• Scott Adam Penner

  • Role: Counsel
  • Firm: Eversheds Sutherland (US) LLP
  • Office Location: Not specified in the provided search results.
  • Note: Listed as counsel for Cambridge Industries USA, Inc. in the related district court litigation where the IPR petitions were noticed.

• Regis Calvin Worley, Jr.

  • Role: Counsel
  • Firm: Eversheds Sutherland (US) LLP
  • Office Location: Not specified in the provided search results.
  • Note: Listed as counsel for Cambridge Industries USA, Inc. in the related district court litigation. It is also known that Regis Worley has been promoted to the rank of Captain in the U.S. Navy and Cozen O'Connor, a firm he is associated with, represents diverse clients in complex patent matters including PTAB proceedings. While the PacerMonitor entry links him to Eversheds Sutherland (US) LLP for this specific case, his experience includes patent litigation and PTAB proceedings.

The above attorneys were identified through their appearance in the related district court case (Applied Optoelectronics, Inc. v. Cambridge Industries USA, Inc., Case No. 3:24-cv-01010) where a notice of the IPR filings was submitted. While direct appearances for IPR2025-00435 on a PTAB docket were not explicitly found in the web search snippets, these attorneys represented Cambridge Industries USA, Inc. in the related federal litigation concerning the very patents at issue in the IPRs.

I'll research the counsel of record for the defendant side in this matter, checking both the IPR docket and the underlying district court litigation.

I have the IPR-side counsel. Now let me verify the district court docket for both sides and confirm whether local counsel appear.

Scope note: two "defendants," and they point in opposite directions

Before listing names, the role framing has to be untangled, because the metadata and the previously generated sections use "plaintiff/defendant" in two different senses:

• In IPR2025-00435 itself, the metadata is right: Cambridge Industries USA is the Petitioner (styled plaintiff) and Applied Optoelectronics, Inc. is the Defendant/Patent Owner (styled respondent). So the literal "defendant" in this case = AOI, and its counsel of record is Weintraub Tobin.
• In the underlying patent infringement case (Applied Optoelectronics, Inc. v. Cambridge Industries USA, Inc., N.D. Cal. No. 3:24-cv-01010-JD, filed Feb. 20, 2024), the roles are reversed: AOI is plaintiff and Cambridge Industries USA is the defendant — so "counsel for the defendant in the patent infringement case" as most readers would understand the request = Eversheds Sutherland (US) LLP (Pisano, Penner, Worley).

I set out both, since the prior "Plaintiff representatives" section captured only the Eversheds/Cambridge side and did so under a label that inverts the district court caption.

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A. Counsel of record for Applied Optoelectronics, Inc. (Defendant / Patent Owner in IPR2025-00435)

Source: Patent Owner's Mandatory Notices filed Mar. 7, 2025 in IPR2025-00435, and the signature block of Paper 11 in the consolidated Director decision (June 27, 2025), both on PTACTS.

Both names also appear as Patent Owner's counsel in the sibling AOI IPRs (e.g., IPR2026-00122 on the '890 patent), confirming the pairing is the standing AOI PTAB team. Notably, the same two attorneys appear on AOI's side as plaintiff in the N.D. Cal. case — AOI uses one firm for both tracks.

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B. Counsel of record for Cambridge Industries USA, Inc. (Defendant in the underlying N.D. Cal. infringement case; Petitioner in the IPRs)

Source: N.D. Cal. docket entries 13–18 (Mar.–Apr. 2024), plus the Petitioner service block in the June 27, 2025 Director decision.

Key gaps for this side:

• No separate local counsel has appeared in the N.D. Cal. docket on the record available from the Justia/CourtListener docket snapshots — all defendant-side appearances are Eversheds Sutherland. Eversheds is not a "local counsel" boutique; the appearances were filed directly.
• The docket shows a "Declaration of Gerald G. Wong" filed with Cambridge's May 9, 2024 motion to dismiss. I could not confirm from available sources whether Mr. Wong is a client declarant/witness or an additional attorney — treat his status as unverified.
• No in-house counsel for Cambridge is identified in any public filing I found. The Certificate of Interested Entities (Dkt. 14) identifies the corporate parent only.

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Corrections and flags on the previously generated sections

1. Mislabeled side. The prior section titled "Plaintiff representatives" lists Cambridge/CIG's IPR petitioner counsel. That is right for the PTAB caption but inverts the district court caption, where Cambridge is the defendant. Anyone reading only that section could misidentify who represents whom in the infringement suit.
2. Wrong N.D. Cal. case number in places. The prior section gives "5:24-cv-01010"; the correct number is 3:24-cv-01010-JD (N.D. Cal., Judge James Donato, San Francisco). The "5:24-cv-…" numbers belong to AOI's Eoptolink case (5:24-cv-08165-NW).
3. Mandamus date appears wrong. The prior section says the Federal Circuit mandamus petition was filed 2025-12-09 and denied the same day. The record shows the petition was filed October 10, 2025 (IPWatchdog hosts the filing as "oct.-10-cambridge-mandamus-petition.pdf," In re Cambridge Industries USA, Inc.), and the Federal Circuit denied it on December 9, 2025 (CourtListener, In re Cambridge Industries USA, Inc.). The December date is the denial, not the filing.
4. Unverified biographical claim. The prior section's note tying Regis Worley to Cozen O'Connor and a U.S. Navy captaincy is not supported by anything in the docket or firm materials I found; I would strike it unless a primary source surfaces.
5. Firm-name variants. Filings use both "Eversheds Sutherland (US) LLP" (Director's decision signature block) and "Eversheds Sutherland LLP" (Petitioner service list in the Mandatory Notices); these are the same firm. Similarly, AOI's firm signs as both "Weintraub Tobin Law Corporation" and "Weintraub Tobin Chediak Coleman Grodin Law Corporation."
6. Third-party aggregator garble. ipverse/GreyB renders the parties as "Pisano, Nicolaet al" and "Carothers, Joet al" — that is truncation of "Nicola A. Pisano" / "Jo Dale Carothers," not separate attorneys.

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Post-institution context (for accuracy about who is still active)

IPR2025-00435 was terminated before institution (Director's discretionary denial, Paper 11, June 27, 2025), and Cambridge's request for Director Review was received July 22, 2025 (PTACTS email authorization). Cambridge then sought mandamus, which the Federal Circuit denied on Dec. 9, 2025 under § 314(d). Cambridge's public parent-company disclosure (Shanghai Cambridge Technology, filed Aug. 25, 2026) states the N.D. Cal. case remains stayed, and that the one instituted sibling IPR reached a final written decision on July 27, 2026 upholding the challenged claims (2–1), with an appeal contemplated — reported by Law360 on July 28, 2026 as a divided PTAB panel finding Cambridge failed to show invalidity in "an Applied Optoelectronics Inc. patent on technology used in fiber optic networks." I have not independently confirmed which sibling proceeding (‑00434, ‑00436 or ‑00437) that FWD belongs to; treat the identification as open.

If any pleading in the stayed district case is under seal or if Cambridge later substituted/appointed local counsel, that would not appear in the docket snapshots above — flagging that limitation explicitly rather than inferring attorney identities.