Case 6:21-cv-00622-ADA Document 88 Filed 03/30/23 Page 1 of 19
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`Civil Action No.: 6:21-cv-00622-ADA
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`JURY TRIAL DEMANDED
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`§§§§§§§§§§§
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`XR COMMUNICATIONS, LLC dba
`VIVATO TECHNOLOGIES,
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`Plaintiff,
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`v.
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`ASUSTeK COMPUTER INC.,
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`Defendant.
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`DEFENDANT ASUSTEK COMPUTER INC.’S
`AMENDED ANSWER TO PLAINTIFF’S COMPLAINT
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`Defendant, ASUSTeK Computer Inc. (“ASUSTeK” or “Defendant”), hereby submits its
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`Amended Answer to Plaintiff XR Communications, LLC d.b.a. Vivato Technologies’ (“Vivato”
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`or “Plaintiff”) Complaint for Patent Infringement (“Complaint”; Dkt. 1). Except as otherwise
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`admitted in this Answer, ASUSTeK denies each and every allegation in the Complaint.
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`INTRODUCTION
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`ASUSTeK denies the allegation set forth in ¶1 of the Complaint.
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`ASUSTeK lacks sufficient knowledge and information on which to form an admission or
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`1.
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`2.
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`a denial regarding the allegations set forth in ¶2 of the Complaint, and therefore denies them.
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`3.
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`Defendant admits that Guglielmo Maconi won the Nobel Prize in Physics in 1909.
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`ASUSTeK lacks sufficient knowledge and information on which to form an admission or a denial
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`regarding the rest of the allegations set forth in ¶3 of the Complaint, and therefore denies them.
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`4.
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`ASUSTeK admits that Karl Ferdinand Braun was a contemporary of Marconi and shared the
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`1909 Nobel Prize in Physics with Guglielmo Marconi. ASUSTeK lacks sufficient knowledge and
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`information on which to form an admission or a denial regarding the rest of the allegations set forth
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`in ¶4 of the Complaint, and therefore denies them.
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`5.
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`ASUSTeK lacks sufficient knowledge and information on which to form an admission or
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`a denial regarding the allegations set forth in ¶5 of the Complaint, and therefore denies them.
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`6.
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`ASUSTeK lacks sufficient knowledge and information on which to form an admission or
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`a denial regarding the allegations set forth in ¶6 of the Complaint, and therefore denies them.
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`7.
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`ASUSTeK lacks sufficient knowledge and information on which to form an admission or
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`a denial regarding the allegations set forth in ¶7 of the Complaint, and therefore denies them.
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`8.
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`ASUSTeK lacks sufficient knowledge and information on which to form an admission or
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`a denial regarding the allegations set forth in ¶8 of the Complaint, and therefore denies them.
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`9.
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`Defendant denies that it has committed any patent infringement and, specifically denies that
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`the alleged patented innovations are infringed by Defendant’s accused products. Further, ASUSTeK
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`lacks sufficient knowledge and information on which to form an admission or a denial regarding
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`the rest of the allegations set forth in ¶9 of the Complaint, and therefore denies them.
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`PARTIES1
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`10.
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`ASUSTeK lacks sufficient knowledge and information on which to form an admission or
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`a denial regarding the allegations set forth in ¶10 of the Complaint, and therefore denies them.
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`11.
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`ASUSTeK lacks sufficient knowledge and information on which to form an admission or
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`a denial regarding the allegations set forth in ¶11 of the Complaint, and therefore denies them.
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`12.
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`ASUSTeK lacks sufficient knowledge and information on which to form an admission or
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`a denial regarding the allegations set forth in ¶12 of the Complaint, and therefore denies them.
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`1 For ease of reference, Defendant follows the outline headings used in the Complaint. To the
`extent that such headings are deemed to make factual allegations, Defendant does not adopt or
`admit such allegations.
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`2
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`Case 6:21-cv-00622-ADA Document 88 Filed 03/30/23 Page 3 of 19
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`13.
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`ASUSTeK lacks sufficient knowledge and information on which to form an admission or
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`a denial regarding the allegations set forth in ¶13 of the Complaint, and therefore denies them.
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`14.
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`ASUSTeK lacks sufficient knowledge and information on which to form an admission or
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`a denial regarding the allegations set forth in ¶14 of the Complaint, and therefore denies them.
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`15.
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`ASUSTeK lacks sufficient knowledge and information on which to form an admission or
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`a denial regarding the allegations set forth in ¶15 of the Complaint, and therefore denies them.
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`16.
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`ASUSTeK admits that Paragraph 16 contains its full name, that it is a publicly-owned
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`corporation organized under the laws of Taiwan, and that their principal place of business at No.
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`15, Li-Teh Rd., Beitou District, Taipei City 112, Taiwan. ASUSTeK denies the rest of the
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`allegations set forth in ¶16 of the Complaint.
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`JURISDICTION AND VENUE
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`17.
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`ASUSTeK admits that this action purports to arise under the Patent Laws of the United
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`States, Title 35, United States Code. ASUSTeK specifically denies that it is liable for patent
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`infringement under the patent laws of the United States. ASUSTeK does admit that this Court has
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`subject matter jurisdiction 28 U.S.C. §§ 1331 and 1338(a), subject to its affirmative defenses
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`below. Except as expressly admitted herein, ASUSTek denies the allegations in ¶17.
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`18.
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`19.
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`ASUSTeK denies the allegations set forth in ¶18 of the Complaint.
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`ASUSTeK admits that venue is proper for purposes of this action only. Defendant also
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`admits that it is a foreign corporation organized under the laws of Taiwan, with a principal place
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`of business in Taiwan. Except as expressly admitted herein, ASUSTek denies the factual
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`allegations in ¶19.
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`Case 6:21-cv-00622-ADA Document 88 Filed 03/30/23 Page 4 of 19
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`COUNT I
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`INFRINGEMENT OF U.S. PATENT NO. 7,729,728
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`20.
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`ASUSTeK realleges and incorporates by reference the foregoing paragraphs as if fully set
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`forth herein.
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`21.
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`ASUSTeK admits that the first page of U.S. Patent No. 7,729,728 appears to identify its
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`date of issuance as June 1, 2010, and that the invention is entitled “Forced Beam Switching in
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`Wireless Communication Systems Having Smart Antennas.” ASUSTeK admits that what appears
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`to be a copy of the ‘728 Patent is attached to the Complaint as Exhibit A. ASUSTeK denies the
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`remaining allegations of ¶21.
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`22.
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`23.
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`24.
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`ASUSTeK denies the allegations set forth in ¶22 of the Complaint.
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`ASUSTeK denies the allegations set forth in ¶23 of the Complaint.
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`The cited documentation speaks for themselves. ASUSTeK denies the allegations in ¶ 24
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`of the Complaint.
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`25.
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`The cited documentation speaks for itself. Further, Paragraph 25 contains legal conclusions
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`to which ASUSTeK is not required to answer. To the extent an answer is required, ASUSTeK
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`denies the allegations in ¶25.
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`26.
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`The cited documentation speaks for itself. Further, Paragraph 26 contains legal conclusions
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`to which ASUSTeK is not required to answer. To the extent an answer is required, ASUSTeK
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`denies the allegations in ¶26.
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`27.
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`The cited documentation speaks for itself. Further, Paragraph 27 contains legal conclusions
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`to which ASUSTeK is not required to answer. To the extent an answer is required, ASUSTeK
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`denies the allegations in ¶27.
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`28.
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`The cited documentation speaks for itself. Further, Paragraph 28 contains legal conclusions
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`to which ASUSTeK is not required to answer. To the extent an answer is required, ASUSTeK
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`denies the allegations in ¶28.
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`29.
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`The cited documentation speaks for itself. Further, Paragraph 29 contains legal
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`conclusions to which ASUSTeK is not required to answer. To the extent an answer is required,
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`ASUSTeK denies the allegations in ¶29.
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`30.
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`The cited documentation speaks for itself. Further, Paragraph 30 contains legal
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`conclusions to which ASUSTeK is not required to answer. To the extent an answer is required,
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`ASUSTeK denies the allegations in ¶30.
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`31.
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`The allegations in Paragraph 31 have been dismissed by plaintiff per stipulation, and as
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`such, no response is required by ASUSTeK. To the extent an answer is required, ASUSTeK
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`denies the allegations in ¶31.
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`32.
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`The allegations in Paragraph 32 have been dismissed by plaintiff per stipulation, and as
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`such, no response is required by ASUSTeK. To the extent an answer is required, ASUSTeK
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`denies the allegations in ¶32.
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`33.
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`The allegations in Paragraph 33 have been dismissed by plaintiff per stipulation, and as
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`such, no response is required by ASUSTeK. To the extent an answer is required, ASUSTeK
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`denies the allegations in ¶33.
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`34.
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`35.
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`36.
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`37.
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`38.
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`39.
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`ASUSTeK denies the allegations set forth in ¶34 of the Complaint.
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`ASUSTeK denies the allegations set forth in ¶35 of the Complaint.
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`ASUSTeK denies the allegations set forth in ¶36 of the Complaint.
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`ASUSTeK denies the allegations set forth in ¶37 of the Complaint.
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`ASUSTeK denies the allegations set forth in ¶35 of the Complaint.
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`The allegations in Paragraph 39 have been dismissed by plaintiff per stipulation, and as
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`such, no response is required by ASUSTeK. To the extent an answer is required, ASUSTeK denies
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`the allegations in ¶39.
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`COUNT II
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`INFRINGEMENT OF U.S. PATENT NO. 10,594,376
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`40.
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`ASUSTeK realleges and incorporates by reference the foregoing paragraphs as if fully set
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`forth herein.
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`41.
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`ASUSTeK admits that the first page of U.S. Patent No. 10,594,376 appears to identify its
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`date of issuance as March 17, 2020, and that the invention is entitled “Direct Wireless
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`Communication.” ASUSTeK admits that what appears to be a copy of the ’376 Patent is attached
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`to the Complaint as Exhibit B. ASUSTeK denies the remaining allegations set forth in ¶41.
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`42.
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`43.
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`44.
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`ASUSTeK denies the allegations set forth in ¶42 of the Complaint.
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`ASUSTeK denies the allegations set forth in ¶43 of the Complaint.
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`The cited documentation speaks for themselves. ASUSTeK denies the allegations in ¶44
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`of the Complaint.
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`45.
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`The cited documentation speaks for itself. Further, Paragraph 45 contains legal conclusions
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`to which ASUSTeK is not required to answer. To the extent an answer is required, ASUSTeK
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`denies the allegations in ¶45 of the Complaint.
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`46.
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`The cited documentation speaks for itself. Further, Paragraph 46 contains legal conclusions
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`to which ASUSTeK is not required to answer. To the extent an answer is required, ASUSTeK
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`denies the allegations in ¶46 of the Complaint.
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`47.
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`The cited documentation speaks for itself. Further, Paragraph 47 contains legal conclusions
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`to which ASUSTeK is not required to answer. To the extent an answer is required, ASUSTeK
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`denies the allegations in ¶47 of the Complaint.
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`48.
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`The cited documentation speaks for itself. Further, Paragraph 48 contains legal
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`conclusions to which ASUSTeK is not required to answer. To the extent an answer is required,
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`ASUSTeK denies the allegations in ¶48 of the Complaint.
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`49.
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`The cited documentation speaks for itself. Further, Paragraph 49 contains legal
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`conclusions to which ASUSTeK is not required to answer. To the extent an answer is required,
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`ASUSTeK denies the allegations in ¶49 of the Complaint.
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`50.
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`The cited documentation speaks for itself. Further, Paragraph 50 contains legal
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`conclusions to which ASUSTeK is not required to answer. To the extent an answer is required,
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`ASUSTeK denies the allegations in ¶50 of the Complaint.
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`51.
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`The allegations in Paragraph 51 have been dismissed by plaintiff per stipulation, and as
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`such, no response is required by ASUSTeK. To the extent an answer is required, ASUSTeK
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`denies the allegations in ¶51 of the Complaint.
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`52.
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`The allegations in Paragraph 52 have been dismissed by plaintiff per stipulation, and as
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`such, no response is required by ASUSTeK. To the extent an answer is required, ASUSTeK
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`denies the allegations in ¶52 of the Complaint.
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`53.
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`The allegations in Paragraph 53 have been dismissed by plaintiff and as such, no response
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`is required by ASUSTeK. To the extent an answer is required, ASUSTeK denies the allegations
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`in ¶53 of the Complaint.
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`54.
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`55.
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`56.
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`57.
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`58.
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`ASUSTeK denies the allegations set forth in ¶54 of the Complaint.
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`ASUSTeK denies the allegations set forth in ¶55 of the Complaint.
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`ASUSTeK denies the allegations set forth in ¶56 of the Complaint.
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`ASUSTeK denies the allegations set forth in ¶57 of the Complaint.
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`The allegations in Paragraph 58 have been dismissed by plaintiff and as such, no response
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`is required by ASUSTeK. To the extent an answer is required, ASUSTeK denies the allegations in
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`¶58 of the Complaint.
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`COUNT III
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`INFRINGEMENT OF U.S. PATENT NO. 10,715,235
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`59.
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`ASUSTeK realleges and incorporates by reference the foregoing paragraphs as if fully set
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`forth herein.
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`60.
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`ASUSTeK admits that the first page of U.S. Patent No. 10,715,235 appears to identify its
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`date of issuance as July 14, 2020, and that the invention is entitled “Direct Wireless
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`Communication.” ASUSTeK admits that what appears to be a copy of the ’235 Patent is attached
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`to the Complaint as Exhibit C. ASUSTeK denies the remaining allegations of ¶60 of the Complaint.
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`61.
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`62.
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`63.
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`ASUSTeK denies the allegations set forth in ¶61 of the Complaint.
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`ASUSTeK denies the allegations set forth in ¶62 of the Complaint.
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`The cited documentation speaks for itself. Further, Paragraph 63 contains legal conclusions
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`to which ASUSTeK is not required to answer. To the extent an answer is required, ASUSTeK
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`denies the allegations in ¶63 of the Complaint.
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`64.
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`The cited documentation speaks for itself. Further, Paragraph 64 contains legal conclusions
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`to which ASUSTeK is not required to answer. To the extent an answer is required, ASUSTeK
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`denies the allegations in ¶64 of the Complaint.
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`65.
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`The cited documentation speaks for itself. Further, Paragraph 65 contains legal conclusions
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`to which ASUSTeK is not required to answer. To the extent an answer is required, ASUSTeK
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`denies the allegations in ¶65 of the Complaint.
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`66.
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`The allegations in Paragraph 66 have been dismissed by plaintiff per stipulation, and as such,
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`no response is required by ASUSTeK. To the extent an answer is required, ASUSTeK denies the
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`allegations in ¶66 of the Complaint.
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`67.
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`The allegations in Paragraph 67 have been dismissed by plaintiff per stipulation, and as
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`such, no response is required by ASUSTeK. To the extent an answer is required, ASUSTeK denies
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`the allegations in ¶67 of the Complaint.
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`68.
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`The allegations in ¶68 have been dismissed by plaintiff and as such, no response is required
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`by ASUSTeK. To the extent an answer is required, ASUSTeK denies the allegations in ¶68 of the
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`Complaint.
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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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`ASUSTeK denies the allegations set forth in ¶69 of the Complaint.
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`ASUSTeK denies the allegations set forth in ¶70 of the Complaint.
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`ASUSTeK denies the allegations set forth in ¶ 71 of the Complaint.
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`ASUSTeK denies the allegations set forth in ¶72 of the Complaint.
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`ASUSTeK denies the allegations set forth in ¶73 of the Complaint.
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`The allegations in Paragraph 74 have been dismissed by plaintiff and as such, no response
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`is required by ASUSTeK. To the extent an answer is required, ASUSTeK denies the allegations in
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`¶74 of the Complaint.
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`WILLFUL INFRINGEMENT
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`75.
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`ASUSTeK admits that what appears to be a copy of the publication of their U.S. Patent
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`Application No. 12/138,449, Publication No. 2008/0309555A1, is attached to the Complaint as
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`Exhibit D, and that it is titled “Method for setting smart antenna and system thereof.” ASUSTeK
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`lacks sufficient knowledge and information on which to form an admission or a denial regarding
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`the remaining allegations set forth in ¶75 and therefore denies them.
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`76.
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`ASUSTeK lacks sufficient knowledge and information on which to form an admission or
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`a denial regarding the allegations set forth in ¶76 and therefore denies them.
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`77.
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`ASUSTeK denies the allegations set forth in ¶77 of the Complaint.
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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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`ASUSTeK denies the allegations set forth in ¶78 of the Complaint.
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`ASUSTeK denies the allegations set forth in ¶79 of the Complaint.
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`ASUSTeK denies the allegations set forth in ¶80 of the Complaint.
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`ASUSTeK denies the allegations set forth in ¶81 of the Complaint.
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`ASUSTeK denies the allegations set forth in ¶82 of the Complaint.
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`ASUSTEK’S RESPONSE TO PLAINTIFF’S PRAYER FOR RELIEF
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`83.
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`Defendant denies that Plaintiff is entitled to any of the relief set forth in the Complaint or
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`any other relief, including, but not limited to, the relief set forth in the subsections of Plaintiff’s
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`Prayer for Relief section of the Complaint.
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`JURY DEMAND
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`84.
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`Plaintiff’s demand for a jury trial contains no factual allegations that require a response.
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`AFFIRMATIVE DEFENSES
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`Defendant alleges and asserts the following defenses in response to the allegations of the
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`Complaint, undertaking the burden of proof only as required by law. Defendant reserves the right
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`to amend its Answer, or add additional defenses, as additional information becomes available
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`and/or is discovered.
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`FIRST DEFENSE
`(Failure To State A Claim For Relief)
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`The Complaint fails to state a claim upon which relief can be granted.
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`SECOND DEFENSE
`(Invalidity)
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`The claims of the patents-in-suit are invalid and/or void for failure to meet the conditions
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`of patentability set forth in 35 U.S.C. §§ 101 et seq., including, but not limited to, §§ 101, 102,
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`103, and 112, and/or obviousness-type double patenting, ensnarement, and/or failure to comply
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`with the Rules and Regulations of the U.S. Patent & Trademark Office set forth in Title 37 of the
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`Code of Federal Regulations.
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`THIRD DEFENSE
`(Non-Infringement)
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`Defendant does not infringe, has not infringed, and does not and has not induced
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`infringement or contributed to infringement of any claim of the patents-in-suit under any theory of
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`infringement, including direct infringement, indirect infringement, literal infringement, or
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`infringement under the doctrine of equivalents.
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`FOURTH DEFENSE
`(Limitation On Damages/Failure To Mark)
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`Plaintiff’s requested relief is limited by its failure to comply with the marking and notice
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`requirement of 35 U.S.C. § 287.
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`FIFTH DEFENSE
`(Unenforceability And Equitable Defenses)
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`The claims of the patents-in-suit are unenforceable, in whole or in part, by the doctrines of
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`laches, prosecution laches, waiver, disclaimer, patent misuse, ensnarement, and/or estoppel,
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`including equitable estoppel, prosecution history estoppel, and/or prior art estoppel.
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`SIXTH DEFENSE
`(No Exceptional Case)
`Plaintiff cannot prove that this is an exceptional case that would justify an award of attorney
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`fees against Defendant pursuant to 35 U.S.C. § 285.
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`SEVENTH DEFENSE
`(No Basis For Injunctive Relief)
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`Plaintiff is not entitled to injunctive relief against Defendant for at least the following
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`reasons on information and belief: Plaintiff is not competing with Defendant, Plaintiff is not
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`practicing the alleged inventions of the patents-in-suit, Plaintiff has not suffered irreparable harm,
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`and/or Plaintiff has an adequate remedy at law (to the extent it is entitled to any remedy, which
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`Defendant denies).
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`EIGHTH DEFENSE
`(License and/or Exhaustion)
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`To the extent that Plaintiff’s allegations of infringement relate to products or services that
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`were provided by or for any licensee of the patents-in-suit and/or provided to Defendant by or
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`through a licensee of the patents-in-suit or under a covenant not to sue, whether explicitly or
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`impliedly, Plaintiff’s claims are barred.
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`NINTH DEFENSE
`(Failure to Mitigate Damages)
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`Plaintiff’s claims are barred, in whole or in part, by its failure to mitigate damages.
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`TENTH DEFENSE
`(Standards-Essential Patents)
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`To the extent the patents-in-suit should have been disclosed as essential to a standard,
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`including but not limited to the Wi-Fi communications technology standard (e.g., IEEE 802.11ax;
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`IEEE 802.11ac), any damages should be limited in accordance with Plaintiff’s obligation to license
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`the patents-in-suit as fair, reasonable, and non-discriminatory rates, and Plaintiff’s claims are further
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`barred under unclean hands or other equitable principles due to any failure to disclose the patents to
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`the relevant standard-setting organizations.
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`ELEVENTH DEFENSE
`(Lack Of Knowledge)
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`To the extent Plaintiff alleges that Defendant indirectly infringes, either by contributory
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`infringement or inducement of infringement, Defendant cannot be liable for the acts alleged to
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`have been performed before Defendant had knowledge of any of the patents-in-suit or that its
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`actions would cause infringement of one or more of those patents.
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`TWELFTH DEFENSE
`(Inequitable Conduct)
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`Plaintiff’s enforcement of the ’235 and ’376 patents is barred by inequitable conduct, as
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`follows. The ’376 and ’235 Patents ultimately arose from an application originally filed in 2003 as
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`Application Serial Number 10/700,329 (the “’329 application”). The ’329 application has a
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`complex history, but by fall of 2007 it was assigned to Vivato Networks, Inc. In 2006, attorney
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`Edward J. Brooks III was hired to prosecute the ’329 application. In November 2007, Aequitas
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`Capital Management, Inc. (“Aequitas Capital”) agreed to loan up to $1,000,000 to Vivato
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`Networks, with an initial advance of $300,000, secured in part by this patent application. In
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`December 2007, Vivato Networks merged with Catcher Holdings, Inc. (“Catcher”), and transferred
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`the ’329 application to Vivato Networks Holdings, LLC (“Vivato Holdings”). Vivato Holdings
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`granted Catcher the exclusive right to prosecute the application. On April 1, 2008, Catcher ceased
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`operations and terminated all employees due to a lack of working capital. In late April or early
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`May 2008, Brooks withdrew as the attorney of record for the ’329 application because he was not
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`being paid for prosecuting the application. Brooks confirmed at his deposition in XR
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`Communications, LLC v D-Link Systems, Inc., et al., 8:17-CV-00596-DOC-JDE (C.D. Cal.) that
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`his withdrawal was a result of Catcher not paying his bills. In June 2008, Aequitas Equipment
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`Finance, LLC (“Aequitas”), assignee of Aequitas Capital’s security interest in the application,
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`sought to foreclose on the ’329 application. which had been abandoned between June and July
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`2008 for failure to respond to office actions from the United States Patent and Trademark Office
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`(“USPTO”).
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`In April 2009, Aequitas obtained a foreclosure judgment against Vivato Networks and
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`Vivato Holdings, and took titled of the abandoned application through a sheriff’s sale. In fall 2009,
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`Carl J. Schwedler, attorney for Aequitas, filed a petition to revive the ’329 application. As part of
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`Case 6:21-cv-00622-ADA Document 88 Filed 03/30/23 Page 14 of 19
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`the petition, Schwedler represented that the entire period of delay, from the due date for filing a
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`reply to the pending USPTO office action to the date of the petition, was unintentional under 37
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`C.F.R. § 1.137(b)(4). Schwedler’s representation that the delay in prosecuting the application was
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`unintentional was false. At his deposition in XR Communications, LLC v D-Link Systems, Inc., et
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`al., 8:17-CV-00596-DOC-JDE (C.D. Cal.) on July 8, 2022, Schwedler acknowledged that, in
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`making the representation that the delay was unintentional, he did not speak with anyone at
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`Aequitas about the circumstances of the abandonment. Schwedler also did not speak with Brooks,
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`the prosecuting attorney who had withdrawn after not being paid to continue prosecuting the patent
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`application. The USPTO denied the petition to revive the ’329 application.
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`In December 2009, Aequitas sold its patent portfolio (including the still-abandoned ’329
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`application) to Plaintiff XR. In 2010, XR took responsibility for prosecuting the ’329 application.
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`On November 8, 2010, Daniel P. Burke, an attorney for XR, filed a renewed petition to revive the
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`’329 application. In doing so, Burke represented to the USPTO that the entire period of delay from
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`the due date for filing a reply to the pending USPTO office action to the date of the petition was
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`unintentional. Burke’s representation that delay in prosecuting the application was unintentional
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`was false. Schwedler testified at his deposition that he did not recall ever speaking with Burke
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`about the circumstances of the abandonment of the application, and XR itself would not have had
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`knowledge of those circumstances.
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`Rather than being unintentional, the delay that resulted in abandonment of the ’329
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`application was caused by Catcher’s prosecution counsel, Brooks, withdrawing because of a lack
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`of payment and each of the then current assignees of the patent application failure to hire
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`prosecution counsel to replace Brooks.
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`Case 6:21-cv-00622-ADA Document 88 Filed 03/30/23 Page 15 of 19
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`Catcher’s SEC filings reflect that, at least as of September 2007, it likely had sufficient
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`funds to pay for prosecution of the application. Moreover, Catcher’s wholly-owned subsidiary
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`Vivato Networks had received an agreement for a $1,000,000 loan in November 2007 (with
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`$300,000 advances), which could have been used to pay for prosecution of the ’329 application.
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`Yet, Catcher deliberately chose not to pay for the continued prosecution of the application, and
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`Schwedler and Burke engaged in inequitable conduct with the intent to deceive the Patent Office
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`when they certified otherwise. To the extent that Vivato Holdings (a wholly owned subsidiary of
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`Catcher and the assignee of record for the application before Aequitas’s foreclosure) was
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`responsible for prosecution of the ’329 application, it too had sufficient funds to pay Brooks to
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`prosecute the application, but chose not to.
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`Therefore, Aequitas and XR falsely certified that the entire period of delay in replying to
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`the PTO was unintentional. As Schwedler’s deposition testimony confirmed, neither Aequitas nor
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`XR had any personal knowledge as to why Catcher and Vivato Holdings delayed in replying to the
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`PTO, and did not take any steps to investigate whether the entire period of delay was unintentional.
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`Indeed, upon information and belief, and based upon the deposition testimony of Schwedler and
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`Brooks, neither Schwedler nor Burke (the attorneys who made the false certifications) spoke with
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`Brooks or each other about the prosecution history of the application or the reasons that they were
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`abandoned.
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`The false representations of Schwedler and Burke that the entire period of delay in
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`responding to the USPTO with respect to the ’329 application was unintentional were made with
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`intent to deceive the USPTO into granting the petitions to revive. Specifically, the following
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`petitions to revive (and requests for reconsideration) contained knowingly false statements made
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`with intent to deceive, and were material to the USPTO’s decision to revive the application and
`
`15
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`Case 6:21-cv-00622-ADA Document 88 Filed 03/30/23 Page 16 of 19
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`ultimately issue the Patents-in-Suit: the petition to revive the ’329 application, filed on August 28,
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`2009 by Schwedler; the request for reconsideration of the dismissal of the petition to revive the
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`’329 application, filed on November 18, 2009 by Schwedler; the renewed petition to revive the
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`’329 application, filed on November 8, 2010 by Burke.
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`The false representations of Schwedler and Burke that the entire period of delay in
`
`responding to the USPTO with respect to the ’329 application was unintentional were material to
`
`the USPTO, because without that false representation the USPTO would not have ultimately
`
`granted the petition to revive the ’329 application, so the ’376 and ’235 Patents never would have
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`been issued.
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`Accordingly, Schwedler (for Aequitas) and Burke (for XR) engaged in inequitable conduct
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`in reviving the ’329 application, and as a result, the ’376 and ’235 Patents are unenforceable.
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`RESERVATION OF DEFENSES
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`Defendant reserves the right to assert additional defenses as may be warranted by discovery or
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`further factual investigations in this action.
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`PRAYER FOR RELIEF
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`WHEREFORE, Defendant respectfully requests that this Court enter judgment against
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`Plaintiff as follows:
`
`(a)
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`Adjudging and declaring that Defendant has not infringed and is not infringing any
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`claim of the patents-in-suit, either literally or under the doctrine of equivalents, directly or
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`indirectly, or in any other way;
`
`(b)
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`(c)
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`(d)
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`Adjudging and declaring that the claims of the ’728 patent are invalid;
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`Adjudging and declaring that the claims of the ’376 patent are invalid;
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`Adjudging and declaring that the claims of the ’235 patent are invalid;
`
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`Case 6:21-cv-00622-ADA Document 88 Filed 03/30/23 Page 17 of 19
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`(e)
`
`Dismissing the Complaint with prejudice, denying each and every prayer for relief
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`therein, and entering judgment for Defendant;
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`(f)
`
`Declaring that this case is exceptional under 35 U.S.C. § 285, and awarding
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`Defendant its costs and reasonable attorneys’ fees in defending this action; and
`
`(g)
`
`Granting Defendant such other and further relief as the Court may deem necessary,
`
`just, or proper.
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`JURY DEMAND
`
`In accordance with Rule 38(b) of the Federal Rules of Civil Procedure, Defendant hereby
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`demands a jury trial on all issues triable of right by a jury.
`
`17
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`Case 6:21-cv-00622-ADA Document 88 Filed 03/30/23 Page 18 of 19
`
`Dated: March 30, 2023
`
`RESPECTFULLY SUBMITTED,
`By: /s/ Jonathan K. Waldrop
`Jonathan K. Waldrop (CA Bar No. 297903)
`(Admitted in this District)
`jwaldrop@kasowitz.com
`Marcus A. Barber (CA Bar No. 307361)
`(Admitted in this District)
`mbarber@kasowitz.com
`John W. Downing (CA Bar No. 252850)
`(Admitted in this District)
`jdowning@kasowitz.com
`KASOWITZ BENSON TORRES LLP
`333 Twin Dolphin Drive, Suite 200
`Redwood Shores, California 94065
`Telephone: (650) 453-5170
`Facsimile: (650) 453-5171
`
`Charles Abraham Naggar (NY Bar No. 5356449)
`(Admitted pro hac vice)
`cnaggar@kasowitz.com
`Joshua A. Whitehill (NY Bar No. 4766473)
`(Admitted pro hac vice)
`jwhitehill@kasowitz.com
`KASOWITZ BENSON TORRES LLP
`1633 Broadway
`New York, NY 10019
`(212) 506-1907
`(212) 835-5049 (fax)
`
`Allen F. Gardner
`Texas Bar No. 24043679
`allen@allengardnerlaw.com
`ALLEN GARDNER LAW, PLLC
`609 S. Fannin
`Tyler, Texas 75701
`Tel: (903) 944-7537
`Fax: (903) 944-7856
`
`Attorneys for Defendant
`ASUSTeK COMPUTER INC.
`
`18
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`

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`Case 6:21-cv-00622-ADA Document 88 Filed 03/30/23 Page 19 of 19
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`CERTIFICATE OF SERVICE
`
`A true and correct copy of the foregoing instrument was served or delivered electronically
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`via U.S. District Court [LIVE] — Document Filing System, to all counsel of record, on December
`
`6, 2021.
`
`/s/ Jonathan K. Waldrop
`Jonathan K. Waldrop
`
`19
`
`