Case 1:21-cv-01823-GBW Document 12 Filed 02/28/22 Page 1 of 23 PageID #: 187
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`TIMES FIBER COMMUNICATIONS, INC.,
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`PPC BROADBAND, INC.,
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`v.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Plaintiff,
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`Defendant.
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`C.A. No. 21-1823-LPS
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`JURY TRIAL DEMANDED
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`ANSWER
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`Defendant PPC Broadband, Inc. (“PPC”), by and through its undersigned counsel, hereby
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`files the following Answer against Plaintiff Times Fiber Communications, Inc. (“Plaintiff”), and
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`alleges as follows:
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`NATURE OF THE ACTION
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`1.
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`PPC admits that Plaintiff purports to bring a civil action against PPC for
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`infringement of U.S. Patent Nos. 10,941,016 (the “’016 Patent), 10,988,342 (the “’342 Patent”),
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`11,001,471 (the “’471 Patent”), 10,906,771 (the “’771 Patent”), and 10,913,632 (the “’632
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`Patent”) (collectively, the “Patents-in-Suit”), but denies that it infringes any valid and/or
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`enforceable claim of the Patents-in-Suit, and denies any remaining allegations and/or legal
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`conclusions contained in Paragraph 1 of the Complaint.
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`2.
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`PPC denies knowledge or information sufficient to form a belief as to the truth or
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`falsity of the allegations contained in Paragraph 2 of the Complaint, and therefore denies them.
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`3.
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`PPC admits that Plaintiff purports to assert infringement of all of the Patents-in-
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`Suit by making, using, offering to sell, selling, and/or importing in the United States of coaxial
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`cable and coaxial cable bags with reusable reels used to install coaxial cable lines, but PPC denies
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`TIMES FIBER COMMUNICATIONS, INC.,
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`PPC BROADBAND, INC.,
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`v.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Plaintiff,
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`Defendant.
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`C.A. No. 21-1823-LPS
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`JURY TRIAL DEMANDED
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`
`
`ANSWER
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`Defendant PPC Broadband, Inc. (“PPC”), by and through its undersigned counsel, hereby
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`files the following Answer against Plaintiff Times Fiber Communications, Inc. (“Plaintiff”), and
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`alleges as follows:
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`NATURE OF THE ACTION
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`1.
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`PPC admits that Plaintiff purports to bring a civil action against PPC for
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`infringement of U.S. Patent Nos. 10,941,016 (the “’016 Patent), 10,988,342 (the “’342 Patent”),
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`11,001,471 (the “’471 Patent”), 10,906,771 (the “’771 Patent”), and 10,913,632 (the “’632
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`Patent”) (collectively, the “Patents-in-Suit”), but denies that it infringes any valid and/or
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`enforceable claim of the Patents-in-Suit, and denies any remaining allegations and/or legal
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`conclusions contained in Paragraph 1 of the Complaint.
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`2.
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`PPC denies knowledge or information sufficient to form a belief as to the truth or
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`falsity of the allegations contained in Paragraph 2 of the Complaint, and therefore denies them.
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`3.
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`PPC admits that Plaintiff purports to assert infringement of all of the Patents-in-
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`Suit by making, using, offering to sell, selling, and/or importing in the United States of coaxial
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`cable and coaxial cable bags with reusable reels used to install coaxial cable lines, but PPC denies
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`Case 1:21-cv-01823-GBW Document 12 Filed 02/28/22 Page 2 of 23 PageID #: 188
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`that it infringes any valid and/or enforceable claim of the Patents-in-Suit by doing any of the things
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`listed in Paragraph 3 of the Complaint, and denies any remaining allegations and/or legal
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`conclusions contained in Paragraph 3 of the Complaint.
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`PARTIES
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`4.
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`5.
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`6.
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`PPC admits the allegations contained in Paragraph 4 of the Complaint.
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`PPC admits the allegations contained in Paragraph 5 of the Complaint.
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`JURISDICTION AND VENUE
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`PPC denies knowledge or information sufficient to form a belief as to the truth or
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`falsity of the allegations contained in Paragraph 6 of the Complaint, and therefore denies them.
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`7.
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`While PPC does not contest the Court’s exercise of personal jurisdiction in this
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`case, it denies the allegations contained in Paragraph 7 of the Complaint insofar as they are
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`premised on the false assertion that PPC has committed one or more acts of infringement in the
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`District of Delaware or anywhere else.
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`8.
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`9.
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`PPC does not contest the Court’s exercise of personal jurisdiction in this case.
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`PPC denies the allegations contained in Paragraph 9 of the Complaint.
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`FACTUAL ALLEGATIONS
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`10.
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`PPC denies knowledge or information sufficient to form a belief as to the truth or
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`falsity of the allegations contained in Paragraph 10 of the Complaint, and therefore denies them.
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`11.
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`PPC admits the allegations contained in the first sentence of Paragraph 11 of the
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`Complaint, but denies any remaining allegations contained in Paragraph 11 of the Complaint.
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`12.
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`13.
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`PPC denies the allegations contained in Paragraph 12 of the Complaint.
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`PPC denies knowledge or information sufficient to form a belief as to the truth or
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`falsity of the allegations contained in Paragraph 13 of the Complaint, and therefore denies them.
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`Case 1:21-cv-01823-GBW Document 12 Filed 02/28/22 Page 3 of 23 PageID #: 189
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`14.
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`The allegations contained in Paragraph 14 of the Complaint attempt to characterize
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`the contents of publicly available documents that speak for themselves. To the extent an answer
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`is required, PPC denies such characterizations and otherwise denies the allegations contained in
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`Paragraph 14 of the Complaint.
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`15.
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`PPC admits that on their face the Patents-in-Suit purport to claim priority to U.S.
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`Patent Application No. 14/634,007, filed on February 27, 2015, which issued as U.S. Patent No.
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`9,695,008, but PPC denies that the Patents-in-Suit are entitled to such a priority claim, and further
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`contend, as alleged in more detail below, that such a false priority claim is part of a fraudulent
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`scheme engaged in by Plaintiff and its employees/agents to deceive the United States Patent and
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`Trademark Office, and ultimately this Court.
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`16.
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`17.
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`18.
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`19.
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`20.
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`21.
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`PPC denies the allegations contained in Paragraph 16 of the Complaint.
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`PPC denies the allegations contained in Paragraph 17 of the Complaint.
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`PPC denies the allegations contained in Paragraph 18 of the Complaint.
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`PPC denies the allegations contained in Paragraph 19 of the Complaint.
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`PPC denies the allegations contained in Paragraph 20 of the Complaint.
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`PPC denies knowledge or information sufficient to form a belief as to the truth or
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`falsity of the allegations contained in Paragraph 21 of the Complaint, and therefore denies them.
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`22.
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`23.
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`24.
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`25.
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`26.
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`PPC admits the allegations contained in Paragraph 22 of the Complaint.
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`PPC admits the allegations contained in Paragraph 23 of the Complaint.
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`PPC admits the allegations contained in Paragraph 24 of the Complaint.
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`PPC admits the allegations contained in Paragraph 25 of the Complaint.
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`PPC denies the allegations contained in Paragraph 26 of the Complaint.
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`Case 1:21-cv-01823-GBW Document 12 Filed 02/28/22 Page 4 of 23 PageID #: 190
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`27.
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`PPC denies there is anything innovative about Plaintiff’s product, but otherwise
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`admits the allegations contained in Paragraph 27 of the Complaint.
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`28.
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`29.
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`PPC denies the allegations contained in Paragraph 28 of the Complaint.
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`PPC denies there is any “invention” disclosed in the Patent-in-Suit, but otherwise
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`admits the allegations contained in Paragraph 29 of the Complaint.
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`30.
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`PPC denies the allegations contained in the last sentence of Paragraph 30 of the
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`Complaint insofar as they characterize the scope and/or impact of the Covenant on Plaintiff’s
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`claims of infringement in this case, but otherwise admits the allegations contained in Paragraph 30
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`of the Complaint.
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`31.
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`PPC denies the allegations contained in the first sentence of Paragraph 31 of the
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`Complaint, admits the allegations contained in the second sentence of Paragraph 31 of the
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`Complaint, and denies knowledge or information sufficient to form a belief as to the truth or falsity
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`of the remaining allegations contained in Paragraph 31 of the Complaint, and therefore denies
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`them.
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`32.
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`PPC admits that it was aware of the existence of the Patents-in-Suit on or about the
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`time each patent issued but denies any and all remaining allegations contained in Paragraph 32 of
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`the Complaint.
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`COUNT 1
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`33.
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`PPC restates and incorporates by reference its responses as set forth in the preceding
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`paragraphs as if fully set forth herein.
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`34.
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`35.
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`36.
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`37.
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`PPC denies the allegations contained in Paragraph 34 of the Complaint.
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`PPC denies the allegations contained in Paragraph 35 of the Complaint.
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`PPC denies the allegations contained in Paragraph 36 of the Complaint.
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`PPC denies the allegations contained in Paragraph 37 of the Complaint.
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`38.
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`39.
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`40.
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`PPC denies the allegations contained in Paragraph 38 of the Complaint.
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`PPC denies the allegations contained in Paragraph 39 of the Complaint.
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`PPC denies knowledge or information sufficient to form a belief as to the truth or
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`falsity of the allegations contained in Paragraph 40 of the Complaint, and therefore denies them.
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`41.
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`42.
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`43.
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`44.
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`45.
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`46.
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`PPC denies the allegations contained in Paragraph 41 of the Complaint.
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`PPC denies the allegations contained in Paragraph 42 of the Complaint.
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`PPC denies the allegations contained in Paragraph 43 of the Complaint.
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`PPC denies the allegations contained in Paragraph 44 of the Complaint.
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`PPC denies the allegations contained in Paragraph 45 of the Complaint.
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`PPC denies the allegations contained in Paragraph 46 of the Complaint.
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`COUNT 2
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`47.
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`PPC restates and incorporates by reference its responses as set forth in the preceding
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`paragraphs as if fully set forth herein.
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`48.
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`49.
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`50.
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`51.
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`52.
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`53.
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`54.
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`PPC denies the allegations contained in Paragraph 48 of the Complaint.
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`PPC denies the allegations contained in Paragraph 49 of the Complaint.
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`PPC denies the allegations contained in Paragraph 50 of the Complaint.
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`PPC denies the allegations contained in Paragraph 51 of the Complaint.
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`PPC denies the allegations contained in Paragraph 52 of the Complaint.
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`PPC denies the allegations contained in Paragraph 53 of the Complaint.
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`PPC denies knowledge or information sufficient to form a belief as to the truth or
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`falsity of the allegations contained in Paragraph 54 of the Complaint, and therefore denies them.
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`55.
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`56.
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`57.
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`PPC denies the allegations contained in Paragraph 55 of the Complaint.
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`PPC denies the allegations contained in Paragraph 56 of the Complaint.
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`PPC denies the allegations contained in Paragraph 57 of the Complaint.
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`Case 1:21-cv-01823-GBW Document 12 Filed 02/28/22 Page 6 of 23 PageID #: 192
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`58.
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`59.
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`60.
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`PPC denies the allegations contained in Paragraph 58 of the Complaint.
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`PPC denies the allegations contained in Paragraph 59 of the Complaint.
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`PPC denies the allegations contained in Paragraph 60 of the Complaint.
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`COUNT 3
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`61.
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`PPC restates and incorporates by reference its responses as set forth in the preceding
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`paragraphs as if fully set forth herein.
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`62.
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`63.
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`64.
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`65.
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`66.
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`67.
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`68.
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`PPC denies the allegations contained in Paragraph 62 of the Complaint.
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`PPC denies the allegations contained in Paragraph 63 of the Complaint.
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`PPC denies the allegations contained in Paragraph 64 of the Complaint.
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`PPC denies the allegations contained in Paragraph 65 of the Complaint.
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`PPC denies the allegations contained in Paragraph 66 of the Complaint.
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`PPC denies the allegations contained in Paragraph 67 of the Complaint.
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`PPC denies knowledge or information sufficient to form a belief as to the truth or
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`falsity of the allegations contained in Paragraph 68 of the Complaint, and therefore denies them.
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`69.
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`70.
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`71.
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`72.
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`73.
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`74.
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`PPC denies the allegations contained in Paragraph 69 of the Complaint.
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`PPC denies the allegations contained in Paragraph 70 of the Complaint.
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`PPC denies the allegations contained in Paragraph 71 of the Complaint.
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`PPC denies the allegations contained in Paragraph 72 of the Complaint.
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`PPC denies the allegations contained in Paragraph 73 of the Complaint.
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`PPC denies the allegations contained in Paragraph 74 of the Complaint
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`COUNT 4
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`75.
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`PPC restates and incorporates by reference its responses as set forth in the preceding
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`paragraphs as if fully set forth herein.
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`76.
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`PPC denies the allegations contained in Paragraph 76 of the Complaint.
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`77.
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`78.
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`79.
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`80.
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`81.
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`82.
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`PPC denies the allegations contained in Paragraph 77 of the Complaint.
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`PPC denies the allegations contained in Paragraph 78 of the Complaint.
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`PPC denies the allegations contained in Paragraph 79 of the Complaint.
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`PPC denies the allegations contained in Paragraph 80 of the Complaint.
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`PPC denies the allegations contained in Paragraph 81 of the Complaint.
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`PPC denies knowledge or information sufficient to form a belief as to the truth or
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`falsity of the allegations contained in Paragraph 82 of the Complaint, and therefore denies them.
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`83.
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`84.
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`85.
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`86.
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`87.
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`88.
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`PPC denies the allegations contained in Paragraph 83 of the Complaint.
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`PPC denies the allegations contained in Paragraph 84 of the Complaint.
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`PPC denies the allegations contained in Paragraph 85 of the Complaint.
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`PPC denies the allegations contained in Paragraph 86 of the Complaint.
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`PPC denies the allegations contained in Paragraph 87 of the Complaint.
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`PPC denies the allegations contained in Paragraph 88 of the Complaint
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`COUNT 5
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`89.
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`PPC restates and incorporates by reference its responses as set forth in the preceding
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`paragraphs as if fully set forth herein.
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`90.
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`91.
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`92.
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`93.
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`94.
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`95.
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`96.
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`PPC denies the allegations contained in Paragraph 90 of the Complaint.
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`PPC denies the allegations contained in Paragraph 91 of the Complaint.
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`PPC denies the allegations contained in Paragraph 92 of the Complaint.
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`PPC denies the allegations contained in Paragraph 93 of the Complaint.
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`PPC denies the allegations contained in Paragraph 94 of the Complaint.
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`PPC denies the allegations contained in Paragraph 95 of the Complaint.
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`PPC denies knowledge or information sufficient to form a belief as to the truth or
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`falsity of the allegations contained in Paragraph 96 of the Complaint, and therefore denies them.
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`97.
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`98.
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`99.
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`PPC denies the allegations contained in Paragraph 97 of the Complaint.
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`PPC denies the allegations contained in Paragraph 98 of the Complaint.
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`PPC denies the allegations contained in Paragraph 99 of the Complaint.
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`100. PPC denies the allegations contained in Paragraph 100 of the Complaint.
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`101. PPC denies the allegations contained in Paragraph 101 of the Complaint.
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`102. PPC denies the allegations contained in Paragraph 102 of the Complaint
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`RESPONSE TO PLAINTIFF’S PRAYER FOR RELIEF
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`PPC denies that Plaintiff is entitled to any relief whatsoever against PPC in this action,
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`either as requested in the Complaint or otherwise.
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`AFFIRMATIVE DEFENSES
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`First Defense
`(Failure to State a Claim)
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`The Complaint fails to state a claim upon which relief can be granted.
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`Second Defense
`(Non-Infringement)
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`PPC does not directly infringe, indirectly infringe, contribute to the infringement, or induce
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`infringement of any valid and/or enforceable claim of the Patents-in-Suit, either literally or under
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`the doctrine of equivalents, and has not otherwise committed any acts in violation of 35 U.S.C. §
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`271. PPC has not manufactured, imported, sold for importation, or sold within the United States
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`after importation, any product that is covered by any valid and/or enforceable claim of the Patents-
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`in-Suit.
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`Third Defense
`(Invalidity/Unenforceability)
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`The claims of the Patents-in-Suit are invalid and/or unenforceable for failure to comply
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`with one or more of the requirements set forth in Title 35 of the United States Code, including, but
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`not limited to, Sections 101, 102, 103, and/or 112. Non-limiting examples of prior art that
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`anticipate and/or render the claims in the Patents-in-Suit invalid under Sections 102 and 103
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`include the Accused Products to extent they are found to be within the scope of such claims and
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`qualify as prior art given the earliest priority date to which the claims in the Patents-in-Suit are
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`entitled (which appears to be September 16, 2020, the filing date of the application for U.S. Patent
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`Nos. 10,906,771 and 10,913,632), earlier versions of the Accused Products, and U.S. Patent
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`Application Publication No. 2012/0168554.
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`Fourth Defense
`(Estoppel/Implied License)
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`Plaintiff is estopped from asserting infringement and/or PPC has an implied license to the
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`claims in the Patents-in-Suit by virtue of the Covenant Not to Sue attached as Exhibit F to the
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`Complaint in this action.
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`Fifth Defense
`(Unenforceability Due to Inequitable Conduct)
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`The claims of the Patents-in-Suit are unenforceable based on inequitable conduct
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`committed during the prosecution of the applications that issued as the Patents-in-Suit.
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`Each individual associated with the filing and prosecution of a patent application has a duty
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`of candor and good faith in dealing with the U.S. Patent & Trademark Office (“USPTO”), which
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`includes a duty to disclose to the USPTO all information known to that individual to be material
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`to patentability.
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`Upon information and belief, Tara L. Marcus, the attorney substantively involved in
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`prosecuting the applications that issued as the Patents-in-Suit, was aware of material information,
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`but withheld or concealed that information with the intent to deceive the USPTO.
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`Between September 30, 2019 and October 3, 2019, PPC marketed its Perfect Tote™ 500
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`Cable Bag designed to contain PPC’s Perfect Flex® Coaxial Cable and Reusable Cable Reel
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`Assembly (the “Accused Products”) at the Cable-Tec Expo, which took place in New Orleans,
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`Louisiana.
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`Upon information and belief, employees of Times Fiber Communications, Inc., which is a
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`subsidiary of Amphenol, attended the Cable-Tec Expo and became aware of and took pictures of
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`the Accused Products.
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`All of the applications that issued as the Patents-in-Suit were filed after the Cable-Tec
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`Expo.
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`Upon information and belief, Attorney Marcus, alleged that the applications that issued as
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`the Patents-in-Suit were continuations of earlier applications despite adding new matter in those
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`applications that issued as the Patents-in-Suit with the intent to deceive the USPTO to obtain the
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`earlier priority dates to pre-date the September 30, 2019 marketing date of the Accused Products.
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`Each of the Patents-in-Suit claims to be a continuation of Application No. 16/804,577 (the
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`“’4577 Application”) (Ex. 5), which was filed on February 28, 2020 and published as U.S.
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`Publication No. 2020/0198924 A1 (the ’8924 Publication”) (Ex. 6) on June 25, 2020.
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`The ’4577 Application is still pending.
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`The ’4577 Application claims to be a continuation of Application No. 15/833,091 (the
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`“’3091 Application”) (Ex. 3), which was filed on December 6, 2017 and issued as U.S. Patent No.
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`10,589,957 B2 (the “’957 Patent”) (Ex. 17) on March 17, 2020.
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`The ’3091 Application and therefore the issued ’957 Patent claim to be a continuation of
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`Application No. 15/433,789 (the “’3789 Application”) (Ex. 2), which was filed on February 15,
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`2017 and issued as U.S. Patent No. 9,862,566 B2 (the “’566 Patent”) (Ex. 18) on January 9, 2018.
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`The ’3789 Application and therefore the issued ’566 Patent claim to be a division of
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`Application No. 14/634,007 (the “’4007 Application) (Ex. 1), which was filed on February 27,
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`2015 and issued as U.S. Patent No. 9,695,008 B2 (the “’008 Patent”) (Ex. 19) on July 4, 2017.
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`The ’4577 Application, the ’3091 Application, the ’3789 Application, and the ’4007
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`Application are collectively referred to herein as the Parent Applications.
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`On January 9, 2020, approximately three months after the Cable-Tec Expo, Attorney
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`Marcus, the prosecuting attorney for the ’3091 Application, filed an Amendment After Final
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`Action with RCE in the ’3091 Application (the “January 9, 2020 Amendment”). (Ex. 4.)
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`In the January 9, 2020 Amendment, Attorney Marcus added new claims 24-35. (Ex. 4 at
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`6-8.)
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`New dependent method claim 25, which issued in the ’957 Patent as claim 14, included the
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`claim limitation “wherein the coil of cable lacks a support reel prior to the step of placing the coil
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`of cable on the elongated annular wall.” (Ex. 4 at 6.)
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`New independent method claim 28, which was canceled prior to issuance of the ’957
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`Patent, included the claim limitation “wherein the coil of cable lacks a support reel prior to the
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`step of placing the coil of cable on the elongated annular wall.” (Ex. 4 at 6.)
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`Upon information and belief, Attorney Marcus included the limitation “wherein the coil of
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`cable lacks a support reel prior to the step of placing the coil of cable on the elongated annular
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`wall” with knowledge of the Accused Products and that the Accused Products had been marketed
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`prior to the January 9, 2020 Amendment.
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`Since the drawings and specifications of the ’3091 Application, the ’3789 Application, and
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`the ’4007 Application do not disclose that the coil of cable lacks a support reel prior to the step of
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`placing the coil of cable on the elongated annular wall, the inclusion of that limitation in claims 25
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`and 28 of the ’3091 Application was new matter.
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`With respect to the new claims, Attorney Marcus stated that “[n]o new matter is added”
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`and that “support for the new claims may be found throughout Applicant’s disclosure.” (Ex. 4 at
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`10 & 14.)
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`Upon information and belief, Attorney Marcus made these statements that “[n]o new matter
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`is added” and that “support for the new claims may be found throughout Applicant’s disclosure”
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`(Ex. 4 at 10 & 14) with the intent to deceive the USPTO to obtain the earlier priority dates of the
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`Parent Applications in order to pre-date the September 30, 2019 marketing date of the Accused
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`Products.
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`On February 28, 2020, Attorney Marcus filed the ’4577 Application. (Ex. 5.)
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`Attorney Marcus filed an Application Data Sheet claiming that the ’4577 Application was
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`a continuation of the ’3091 Application. (Ex. 5, Application Data Sheet at 5.)
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`Paragraphs [0009]-[0017] in the Summary of the Invention, and paragraphs [0029]-[0031]
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`and [0046]-[0049] in the ’4577 Application (Ex. 5) were not included in the ’3091 Application
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`(Ex. 3).
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`Attorney Marcus did not file a preliminary amendment or substitute specification showing
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`the changes and additions made to the specification in the ’4577 Application as compared to the
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`’3091 Application.
`
`On July 10, 2020, Attorney Robert Branham wrote a letter on behalf of Amphenol
`
`Corporation and Times Fiber Communications to PPC asserting that PPC’s Perfect Tote products,
`
`including the Perfect Tote 500 product, infringed the ’957 Patent. (Ex. 13.)
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`- 12 -
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`Case 1:21-cv-01823-GBW Document 12 Filed 02/28/22 Page 13 of 23 PageID #: 199
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`
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`In the July 10, 2020 letter, Attorney Branham asserted that “Amphenol Corporation and its
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`subsidiary Times Fiber Communications, Inc. have been at the forefront of developing . . . re-
`
`usable cable reels and carrying bags.” (Ex. 13 at 1.)
`
`On July 23, 2020, counsel for PPC wrote to Attorney Branham to request that he provide
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`a claim chart comparing at least two independent claims of the ’957 Patent to the accused Perfect
`
`Tote products as well as a licensing proposal. (Ex. 14.)
`
`On August 21, 2020, Attorney Branham wrote to PPC and included a claim chart
`
`comparing claim 9 of the ’957 Patent to the PPC Perfect Tote as well as a licensing proposal. (Ex.
`
`15.)
`
`Attorney Branham proposed a license and royalty on the sales of “reel-less cable coil” and
`
`asserted that the “’957 Patent clearly enables the use of reel-less cable coil.” (Ex. 15 at 1.)
`
`On August 26, 2020, counsel for PPC wrote to Attorney Branham to reject the licensing
`
`proposal and advise that the Perfect Tote product had been sold by PPC in the United States since
`
`2013, and was therefore prior art to the ’957 Patent. (Ex. 16.)
`
`On September 15, 2020, Attorney Marcus filed a preliminary amendment in the ’4577
`
`Application adding new claims 21 and 22. (Ex. 7 at 5-6.)
`
`New claim 21 included the limitation “a pre-wound reel-less coil of cable.” (Ex. 7 at 5.)
`
`Upon information and belief, Attorney Marcus included the limitation “a pre-wound reel-
`
`less coil of cable” with knowledge of the Accused Products and that the Accused Products had
`
`been marketed prior to the September 15, 2020 Amendment.
`
`Since the drawings and specifications of the Parent Applications, including the ’4577
`
`Application, do not disclose that the coil of cable is “a pre-wound reel-less coil of cable,” the
`
`inclusion of that limitation was new matter.
`
`
`- 13 -
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`
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`Case 1:21-cv-01823-GBW Document 12 Filed 02/28/22 Page 14 of 23 PageID #: 200
`
`
`
`With respect to the new claims, Attorney Marcus stated that “[n]o new matter is added.”
`
`(Ex. 7 at 7.)
`
`Upon information and belief, Attorney Marcus made this statement that “[n]o new matter
`
`is added” (Ex. 7 at 7) with the intent to deceive the USPTO to obtain the earlier priority dates of
`
`the Parent Applications in order to pre-date the September 30, 2019 marketing date of the Accused
`
`Products.
`
`On September 16, 2020, Attorney Marcus filed Application No. 17/022,534 (the “’2534
`
`Application”) (Ex. 8), which issued as U.S. Patent No. 10,906,771 B2 (the “’771 Patent”) on
`
`February 2, 2021.
`
`Attorney Marcus filed an Application Data Sheet in the ’2534 Application claiming that
`
`the ’2534 Application was a continuation of the ’4577 Application. (Ex. 8, Application Data Sheet
`
`at 5.)
`
`Paragraphs [0017]-[0030] in the Summary of the Invention of the ’2534 Application (Ex.
`
`8) were not included in the ’4577 Application (Ex. 5) or any of the Parent Applications.
`
`The new paragraphs in the ’2534 Application included disclosure of a coil of cable that is
`
`pre-wound and reel-less. (Ex. 8 ¶¶ 21, 23, 24, & 27-29.)
`
`The original claims in the ’2534 Application included limitations requiring a coil of cable
`
`that is pre-wound and reel-less. (Ex. 8 Claims 9, 10, & 17.)
`
`Attorney Marcus did not file a preliminary amendment or substitute specification showing
`
`the changes and additions made to the specification in the ’2534 Application as compared to the
`
`’4577 Application.
`
`Since the drawings and specifications of the Parent Applications, including the ’4577
`
`Application, do not disclose that the coil of cable is a pre-wound and reel-less, the inclusion of a
`
`
`- 14 -
`
`
`
`Case 1:21-cv-01823-GBW Document 12 Filed 02/28/22 Page 15 of 23 PageID #: 201
`
`
`
`coil of cable that is pre-wound and reel-less in the specification and in the original claims of the
`
`’2534 Application was new matter.
`
`Upon information and belief, Attorney Marcus included a coil of cable that is pre-wound
`
`and reel-less in the specification and in the original claims of the ’2534 Application with
`
`knowledge of the Accused Products and that the Accused Products had been marketed prior to the
`
`September 16, 2020 filing date of the ’2534 Application.
`
`Upon information and belief, Attorney Marcus alleged that the ’2534 Application was a
`
`continuation of the ’4577 Application with the intent to deceive the USPTO to obtain the earlier
`
`priority dates of the Parent Applications in order to pre-date the September 30, 2019 marketing
`
`date of the Accused Products.
`
`On September 16, 2020, Attorney Marcus filed Application No. 17/022,725 (the “’2725
`
`Application”) (Ex. 9), which issued as U.S. Patent No. 10,913,632 B2 (the “’632 Patent”) on
`
`February 9, 2021.
`
`Attorney Marcus filed an Application Data Sheet in the ’2725 Application claiming that
`
`the ’2725 Application was a continuation of the ’4577 Application. (Ex. 9, Application Data Sheet
`
`at 5.)
`
`Paragraphs [0017]-[0030] in the Summary of the Invention of the ’2725 Application (Ex.
`
`9) were not included in the ’4577 Application (Ex. 5) or any of the Parent Applications.
`
`The new paragraphs in the ’2725 Application included disclosure of a coil of cable that is
`
`pre-wound and reel-less. (Ex. 9 ¶¶ 21, 23, 24, 27, & 29.)
`
`The original claims in the ’2725 Application included limitations requiring a coil of cable
`
`that is pre-wound and reel-less. (Ex. 9 Claims 10 & 14.)
`
`
`- 15 -
`
`
`
`Case 1:21-cv-01823-GBW Document 12 Filed 02/28/22 Page 16 of 23 PageID #: 202
`
`
`
`Attorney Marcus did not file a preliminary amendment or substitute specification showing
`
`the changes and additions made to the specification in the ’2725 Application as compared to the
`
`’4577 Application.
`
`Since the drawings and specifications of the Parent Applications, including the ’4577
`
`Application, do not disclose that the coil of cable is a pre-wound and reel-less, the inclusion of a
`
`coil of cable that is pre-wound and reel-less in the specification and in the original claims of the
`
`’2725 Application was new matter.
`
`Upon information and belief, Attorney Marcus included a coil of cable that is pre-wound
`
`and reel-less in the specification and in the original claims of the ’2725 Application with
`
`knowledge of the Accused Products and that the Accused Products had been marketed prior to the
`
`September 16, 2020 filing date of the ’2725 Application.
`
`Upon information and belief, Attorney Marcus alleged that the ’2725 Application was a
`
`continuation of the ’4577 Application with the intent to deceive the USPTO to obtain the earlier
`
`priority dates of the Parent Applications in order to pre-date the September 30, 2019 marketing
`
`date of the Accused Products.
`
`On October 19, 2020, Attorney Marcus filed Application No. 17/073,445 (the “’3445
`
`Application”) (Ex. 10), which issued as U.S. Patent No. 10,941,016 B2 (the “’016 Patent”) on
`
`March 9, 2021.
`
`Attorney Marcus filed an Application Data Sheet in the ’3445 Application claiming that
`
`the ’3445 Application was a continuation of the ’4577 Application. (Ex. 10, Application Data
`
`Sheet at 5.)
`
`Paragraphs [0017]-[0032] in the Summary of the Invention of the ’3445 Application (Ex.
`
`10) were not included in the ’4577 Application (Ex. 5) or any of the Parent Applications.
`
`
`- 16 -
`
`
`
`Case 1:21-cv-01823-GBW Document 12 Filed 02/28/22 Page 17 of 23 PageID #: 203
`
`
`
`The new paragraphs in the ’3445 Application included disclosure of a coil of cable that is
`
`pre-wound and reel-less. (Ex. 10 ¶¶ 21, 23, 24, 26, 28, & 29.)
`
`The original claims in the ’3445 Application included limitations requiring a coil of cable
`
`that is pre-wound and reel-less. (Ex. 10 Claims 3 & 12.)
`
`Attorney Marcus did not file a preliminary amendment or substitute specification showing
`
`the changes and additions made to the specification in the ’3445 Application as compared to the
`
`’4577 Application.
`
`Since the drawings and specifications of the Parent Applications, including the ’4577
`
`Application, do not disclose that the coil of cable is a pre-wound and reel-less, the inclusion of a
`
`coil of cable that is pre-wound and reel-less in the specification and in the original claims of the
`
`’3445 Application was new matter.
`
`Upon information and belief, Attorney Marcus included a coil of cable that is pre-wound
`
`and reel-less in the specification and in the original claims of the ’3445 Application with
`
`knowledge of the Accused Products and that the Accused Products had been marketed prior to the
`
`October 19, 2020 filing date of the ’3445 Application.
`
`Upon information and belief, Attorney Marcus alleged that the ’3445 Application was a
`
`continuation of the ’4577 Application with the intent to deceive the USPTO to obtain the earlier
`
`priority dates of the Parent Applications in order to pre-date the September 30, 2019 marketing
`
`date of the Accused Products.
`
`On October 19, 2020, Attorney Marcus filed Application No. 17/073,449 (the “’3449
`
`Application”) (Ex. 12), which issued as U.S. Patent No. 10,988,342 B2 (the “’342 Patent”) on
`
`April 27, 2021.
`
`
`- 17 -
`
`
`
`Case 1:21-cv-01823-GBW Document 12 Filed 02/28/22 Page 18 of 23 PageID #: 204
`
`
`
`Attorney Marcus filed an Application Data Sheet in the ’3449 Application claiming that
`
`the ’3449 Application was a continuation of the ’4577 Application. (Ex. 12, Application Data
`
`Sheet at 5.)
`
`Paragraphs [0017]-[0032] in the Summary of the Invention of the ’3449 Application (Ex.
`
`12) were not included in the ’4577 Application (Ex. 5) or any of the Parent Applications.
`
`The new paragraphs in the ’3449 Application included disclosure of a coil of cable that is
`
`pre-wound and reel-less. (Ex. 12 ¶¶ 21, 23, 24, 25-28, & 30-32.)
`
`The original claims in the ’3449 Application included limitations requiring a coil of cable
`
`that is pre-wound and reel-less. (Ex. 12 Claims 1, 14, 19, 21, & 22.)
`
`Attorney Marcus did not file a preliminary amendment or substitute specification showing
`
`the changes and additions made to the specification in the ’3449 Application as compared to the
`
`’4577 Application.
`
`Since the drawings and specificatio
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