Case 1:19-cv-00859-RTH Document 111 Filed 04/12/23 Page 1 of 17
`
`
`
`IN THE UNITED STATES COURT OF FEDERAL CLAIMS
`
`
`
`Plaintiffs,
`
`
`
`v.
`
`
`E-NUMERATE SOLUTIONS, INC. and
`E-NUMERATE, LLC,
`
`
`
`
`
`THE UNITED STATES,
`
`
`
`
`
`
`
`
`
`
`
`
`No. 19-859 C
`
`Judge Ryan T. Holte
`
`
`
`Defendant.
`
`
`
`
`
`DEFENDANT’S SUPPLEMENTAL CLAIM CONSTRUCTION
`BRIEF ON INDEFINITENESS
`
`
`
`
`
`
`
`
`
`
`Of Counsel:
`SCOTT BOLDEN
`NELSON KUAN
`U.S. Department of Justice
`
`
`April 12, 2023
`
`
`BRIAN M. BOYNTON
`Principal Deputy Assistant Attorney
`General
`
`GARY L. HAUSKEN
`Director
`
`SHAHAR HAREL
`Trial Attorney
`Commercial Litigation Branch
`Civil Division
`Department of Justice
`Washington, DC 20530
`shahar.harel@usdoj.gov
`Telephone: (202) 305-3075
`Facsimile: (202) 307-0345
`
`COUNSEL FOR THE DEFENDANT,
`THE UNITED STATES
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`
`I.
`
`II.
`
`Case 1:19-cv-00859-RTH Document 111 Filed 04/12/23 Page 2 of 17
`
`TABLE OF CONTENTS
`
`INTRODUCTION ...............................................................................................................1
`
`ARGUMENT .......................................................................................................................1
`
`A.
`
`B.
`
`C.
`
`Supplemental Term 1: “code for identifying . . . unit of measure” (‘383
`Patent, Claim 1) .......................................................................................................1
`
`Supplemental Term 2: “code for causing automatic . . . unit of
`measure” (‘383 Patent, Claim 1) ..............................................................................7
`
`Supplemental Term 3: “code for processing. . . markup document”
`(‘383 Patent, Claim 1) ............................................................................................12
`
`III.
`
`CONCLUSION ..................................................................................................................14
`
`
`
`
`
`
`
`ii
`
`

`

`Case 1:19-cv-00859-RTH Document 111 Filed 04/12/23 Page 3 of 17
`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`
`
`Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371 (Fed. Cir. 2009) ..................................... 11
`
`Cellcast Tech., LLC v. United States, 150 Fed. Cl. 353 (2020) ................................................ 2, 11
`
`Competitive Techs. v. Fujitsu Ltd., 286 F. Supp. 2d 1161 (N.D. Cal. 2003) .................................. 9
`
`EON Corp. IP Holdings v. AT & T Mobility LLC, 785 F.3d 616 (Fed. Cir. 2015) .................. 6, 13
`
`ePlus, Inc. v. Lawson Software Inc., 700 F.3d 509 (Fed. Cir. 2012) ............................................ 11
`
`Ergo Licensing, LLC v. Carefusion 303, Inc., 673 F.3d 1361 (Fed. Cir. 2012) ....................... 6, 13
`
`Grecia v. Samsung Elecs. Am., Inc., 780 F. App’x 912 (Fed. Cir. 2019) ............................. 3, 7, 11
`
`Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337 (Fed. Cir. 2008)............ 3
`
`In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011) ........... 6
`
`Lockheed Martin Corp. v. Space Systems/Loral, Inc., 324 F.3d 1308 (Fed. Cir. 2003) ................. 8
`
`Mediatek, Inc. v. Sanyo Elec. Co., 513 F. Supp. 2d 778 (E.D. Tex. 2007)..................................... 9
`
`Spa Syspatronic AG v. United States, 117 Fed. Cl. 375 (2014) ................................................ 6, 13
`
`Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed Cir. 2015) ................................................ 2
`
`STATUTES
`
`35 U.S.C. § 112, ¶ 6 ............................................................................................................... passim
`
`
`
`
`
`
`
`iii
`
`

`

`Case 1:19-cv-00859-RTH Document 111 Filed 04/12/23 Page 4 of 17
`
`
`
`Pursuant to the Court’s Order (ECF 109) Defendant, the United States, respectfully
`
`submits this Supplemental Claim Construction Brief on Indefiniteness.
`
`I.
`
`INTRODUCTION
`
`At the conclusion of the first day of the Court’s claim construction hearing, Defendant
`
`identified three claim terms from Claim 1 of U.S. Patent 9,262,383 (the “‘383 Patent”) for which
`
`it sought an indefiniteness ruling. See Nov. 16, 2022 Hr. Tr. at 218:8-11. The Court agreed to
`
`supplemental briefing and a supplemental expert report directed to those terms. See ECF 109 at
`
`*95. The first three limitations of Claim 1 of the ‘383 Patent recite “code for” performing certain
`
`functionality. Each of these terms invoke 35 U.S.C. § 112, ¶ 6, as they are directed to means-
`
`plus-function claiming. Despite not reciting “means for” language, these terms should still be
`
`construed under the same framework because a person having ordinary skill in the art
`
`(“PHOSITA”) would understand that they recite black-box functionality and are not directed to
`
`known software or code from the time of the filing of the ‘383 Patent. For each of these terms,
`
`the specification fails to disclose sufficient structure in the form of an algorithm, and therefore
`
`each of these terms provides an independent reason for invalidating Claim 1 of the ‘383 Patent.
`
`Finally, Defendant’s expert provides a supplemental report directed to these terms, the
`
`understanding of a PHOSITA, and an explanation of how technical portions of the specification
`
`fail to provide an algorithm. The Court should find each of these “code for” terms indefinite
`
`under 35 U.S.C. § 112, ¶ 6.
`
`II.
`
`ARGUMENT
`
`A.
`
`Supplemental Term 1: “code for identifying . . . unit of measure” (‘383
`Patent, Claim 1)
`
`The first clause following the preamble of Claim 1 of the ‘383 Patent recites:
`
`code for identifying a first markup document including first numerical values and
`first tags reflecting first characteristics of the first numerical values associated
`
`1
`
`

`

`Case 1:19-cv-00859-RTH Document 111 Filed 04/12/23 Page 5 of 17
`
`
`
`with a first unit of measure, and a second markup document including second
`numerical values and second tags reflecting second characteristics of the second
`numerical values associated with a second unit of measure, wherein the first tags
`and the second tags each include computer-readable semantic tags that describe a
`semantic meaning of a corresponding one of at least one of the first numerical
`values or the second numerical values, via a computer-readable tagging
`association therebetween, where the first characteristics of the first numerical
`values associated with the first unit of measure are different from the second
`characteristics of the second numerical values associated with the second unit of
`measure;
`
`This term is indefinite under 35 U.S.C. § 112, ¶ 6 because it claims a function but the
`
`specification fails to disclose definite structure for performing the claimed function.
`
`This term invokes means-plus-function language. Although a claim term that does not
`
`use the words “means for” presumptively does not invoke § 112, ¶ 6, the presumption is not
`
`strong and is rebuttable. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed Cir.
`
`2015) (en banc) (expressly overruling prior decisions characterizing the presumption as
`
`“strong”). “The standard is whether the words of the claim are understood by persons of
`
`ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Id.
`
`When a claim term lacks the word “means,” the presumption can be overcome and § 112, ¶ 6
`
`will apply if the challenger demonstrates that the claim term fails to recite sufficiently definite
`
`structure or else recites a function without reciting sufficient structure for performing that
`
`function. Id.; see also, Cellcast Tech., LLC v. United States, 150 Fed. Cl. 353, 379-380 (2020).
`
`Here, this term uses the black-box term “code for.” Notably, the patentee drafted this
`
`limitation in the same format as a traditional means-plus-function. Compare ‘383 Patent at
`
`2
`
`

`

`Case 1:19-cv-00859-RTH Document 111 Filed 04/12/23 Page 6 of 17
`
`
`
`145:4-20 (Claim 1) with ‘383 Patent at 146:17-34 (Claim 18).1 A PHOSITA2 would understand
`
`that this term does not refer to any known structures, i.e., known or conventional programs or
`
`code from the time of the invention. Grecia v. Samsung Elecs. Am., Inc., 780 F. App’x 912, 915
`
`(Fed. Cir. 2019) (non-precedential) (“nothing in [the relevant] claims demonstrates that the
`
`‘customization module’ is a term commonly understood by persons of skill to denote a specific
`
`algorithm or other structure”). Instead, a PHOSITA would understand that it describes black-
`
`box functionality. Dr. Martin’s testimony is in accord. Exhibit A (4.12.2023 Declaration of Dr.
`
`Martin (“Martin 2nd Supp. Del.”)) at ¶ 17.
`
`The relevant function for this term is the full clause after “code for,” thereby including
`
`the portion after “wherein.” For the corresponding term using “means for” language, ‘383
`
`Patent, Term 13, Plaintiffs3 asserted that the relevant function should omit the “wherein. . .”
`
`
`1 Any potential argument by Plaintiffs that claim differentiation between this claim and
`Claim 18 indicates that the patentee did not “intend” to invoke § 112, ¶ 6 by the use of the “code
`for” language fails for the same reasons previously discussed with respect to Claim 11 of U.S.
`Patent No. 9,268,748. Whether a claim limitation invokes this framework is a question of law
`and Plaintiffs cannot opt-out of this legal determination by stating its ‘intent’ to bypass it.
`Importantly, the Federal Circuit has noted that “the inventor’s subjective intent is irrelevant to
`the issue of claim construction.” Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540
`F.3d 1337, 1347 (Fed. Cir. 2008).
`
`2 Defendant maintains that a PHOSITA for the patents-in-suit would have at least a
`bachelor’s degree in computer science or computer engineering or a similar field and/or four
`years of software development experience with a focus on data manipulation and presentation
`including work with markup languages with the caveat that extensive experience and technical
`training may substitute for educational requirements, while advanced education might substitute
`for work experience. See ECF 81-7 (12.3.2021 Declaration of Dr. David Martin (“Martin
`Decl.”)) at ¶ 38. Plaintiffs have not challenged these minimum qualifications as befitting a
`PHOSITA. See ECF 81-9 (Declaration of Dr. Michael Smith (“Smith Decl.”)) at ¶ 20.
`
` 3
`
` In response to this Court’s concern regarding the correct names for the Plaintiffs, see
`ECF 109 at n. 1, *1, Defendant has inquired from counsel for Plaintiffs as to the proper identity
`of the relevant corporate entities and is awaiting a response but notes that the original complaint
`and attached civil cover sheet both refer to e-Numerate Solutions, Inc. and e-Numerate, LLC
`notwithstanding the Court’s CM/ECF system.
`
`3
`
`

`

`Case 1:19-cv-00859-RTH Document 111 Filed 04/12/23 Page 7 of 17
`
`
`
`portion of the clause. See ECF 83 at 21-26. However, a PHOSITA would agree with
`
`Defendant’s more specific functionality, which includes the additional requirements of “semantic
`
`tags” and requiring that different characteristics of the values be present. The term in question
`
`plainly states “code for identifying…” and lists many criteria describing what is to be identified.
`
`Additionally, this “code for” clause precedes a “code for” clause of claim 1 which is directed to
`
`“automatic transformation.” In order for there to be an “automatic transformation” into a
`
`“common unit of measure” there first must be an identification and recognition that two markup
`
`documents have different characteristics for their numerical values. See ‘383 Patent at 36:15-17
`
`(“It recognizes, for example, when a first series is in ‘US Dollars’ and a second series is in
`
`‘French Francs’”) (emphasis added). Dr. Martin’s opinion is in accord. Martin 2nd Supp. Decl .
`
`at ¶¶ 18-21. Therefore, Defendant’s identification of the relevant function is appropriate.
`
`The ‘383 Patent’s specification fails to disclose the requisite structure in the form of an
`
`algorithm for either Defendant’s identified function or the broader function Plaintiffs previously
`
`identified for the similar “means for” term, see ECF 79 at 20-22, and therefore this term is
`
`indefinite. Plaintiffs previously relied on a disclosure directed to identifying markup documents
`
`via Document Type Definition (DTD) conformance and subsequent error checking. Id. As
`
`background, the patent explains: “First, the RDML reader 704 finds and receives an RDML
`
`document 102 in text form formatted according to the structure of the RDML DTD 702 (step
`
`802).” ‘383 Patent at 17:42-45. A PHOSITA would understand that one way to “identify”
`
`whether a document is a “markup document” of a desired type is to parse it using a “validating
`
`parser” against a Document Type Definition (DTD) that sets out the permissible form of such
`
`documents. See Martin 2nd Supp Decl. at ¶ 22; see also Martin Decl. at ¶ 115.
`
`4
`
`

`

`Case 1:19-cv-00859-RTH Document 111 Filed 04/12/23 Page 8 of 17
`
`
`
`However, a DTD cannot enforce a requirement that tags be “semantic” tags per the
`
`Court’s construction as “[m]arkup language tags with more than one tag attribute that describes
`
`the meaning of the values contained within tags.” ECF 109 at *55 (emphasis added). A DTD
`
`cannot enforce a requirement that a (tag) attribute “describes the meaning of the values contained
`
`within the tags.” While a DTD can specify certain rules about what pieces of text may appear in
`
`relation to other pieces of text that constitute an XML document, “describing meaning” is far
`
`beyond what can be specified in a DTD. See Martin 2nd Supp Decl. at ¶ 23; see also Martin
`
`Decl. at ¶ 116.
`
`Nonetheless, regardless of which function is appropriate, the recited constraint on the
`
`“characteristics” of “values” is fatal to identification of an algorithm for performing the function
`
`within the patent specification. The “characteristics” are first mentioned in this term as
`
`“[first/second] tags reflecting [first/second] characteristics of the [first/second] numerical values
`
`associated with a [first/second] unit of measure.” The term concludes by requiring “where the
`
`first characteristics of the first numerical values associated with the first unit of measure are
`
`different from the second characteristics of the second numerical values associated with the
`
`second unit of measure.” Thus, this term requires identifying what characteristics the two tags
`
`“reflect” via their “more than one tag attribute that describes the meaning of the numerical
`
`values” and ensuring that the characteristics are different. No algorithm is disclosed in the
`
`specification that can accomplish this. Simply determining that two tag/attribute combinations
`
`(from the two different markup documents) are different does not determine whether the
`
`characteristics they “describe” are different, because there are numerous ways to describe the
`
`same underlying properties with respect to a unit of measure. See Martin 2nd Supp Decl. at ¶ 24
`
`5
`
`

`

`Case 1:19-cv-00859-RTH Document 111 Filed 04/12/23 Page 9 of 17
`
`
`
`(providing an example where different attributes are used to denote the same meaning in the
`
`context of a unit of measure); see also Martin Decl. at ¶ 117.
`
`Plaintiffs previously pointed to portions of the specification, see ECF 79 at 20-22, as
`
`structure for performing the recited function of the corresponding mean-plus-function term:
`
`The RDML Reader 704 may be a class that runs in a separate thread and has
`methods for checking the RDML document 102 type (Time Series, Category,
`XY) and handling errors. The RDML Reader 704 then calls the XML parser 706
`which parses the text (step 804). The RDML processor 708 receives the parsed
`text from the XML parser 706, error checks it and creates an object based on the
`data and structure in the received text. (step 806).
`
`‘383 Patent at 17:45-18:7. However, this reference to “handling errors” and “error checking”
`
`fares no better. It fails to provide an algorithm for determining whether the documents contain
`
`an attribute that “describes the meaning of the values contained within tags.” Nor does the
`
`reference to “handling errors” and “error checking” provide an algorithm for detecting whether
`
`two sets of “characteristics of values” associated with tags are different. See Martin 2nd Supp
`
`Decl. at ¶ 25; see also Martin Decl. at ¶ 118.
`
`To the extent Plaintiffs now argue that an algorithm need not be disclosed under In re
`
`Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011), that case was
`
`directed to a narrow exception that is not applicable here. It is only in the rare circumstances
`
`where any general-purpose computer without any special programming can perform the function
`
`that an algorithm need not be disclosed. See Ergo Licensing, LLC v. Carefusion 303, Inc., 673
`
`F.3d 1361, 1364-65 (Fed. Cir. 2012); see also EON Corp. IP Holdings v. AT & T Mobility LLC,
`
`785 F.3d 616, 621-24 (Fed. Cir. 2015); Spa Syspatronic AG v. United States, 117 Fed. Cl. 375,
`
`392 (2014).
`
`6
`
`

`

`Case 1:19-cv-00859-RTH Document 111 Filed 04/12/23 Page 10 of 17
`
`
`
`In light of the foregoing, a PHOSITA would conclude that the patent does not disclose an
`
`algorithm for performing the term’s function. The term is therefore indefinite, rendering Claim 1
`
`of the ’383 Patent invalid.
`
`B.
`
`Supplemental Term 2: “code for causing automatic . . . unit of measure”
`(‘383 Patent, Claim 1)
`
`The second clause following the preamble of Claim 1 of the ‘383 Patent recites:
`
`code for causing automatic transformation of at least a portion of the first or
`second numerical values of at least one of the first markup document or the
`second markup document, so that at least some of the first numerical values of the
`first markup document and at least some of the second numerical values of the
`second markup document have a common unit of measure;
`
`This term is indefinite under 35 U.S.C. § 112, ¶ 6 because it claims a function but the
`
`specification fails to disclose definite structure for performing the claimed function.
`
`This term invokes means-plus-function language as it uses the black-box term “code for.”
`
`Notably, the patentee drafted a slight variation of this limitation in the same format as a
`
`traditional means-plus-function. Compare ‘383 Patent at 145:21-27 (Claim 1) with ‘383 Patent
`
`at 146:35-41 (Claim 18).4 A PHOSITA would understand that this term does not refer to any
`
`known structures, i.e., known or conventional programs or code from the time of the invention.
`
`Indeed, none are referenced in the specification. Grecia, 780 F. App’x at 915. Instead, a
`
`PHOSITA would understand that it describes black-box functionality. Dr. Martin’s testimony is
`
`in accord. See Martin 2nd Supp. Del. at ¶ 30.
`
`The relevant function for this term is the full clause after “code for,” thereby including
`
`the portion after “so that,” which the Court construed to comport with its plain and ordinary
`
`
`4 Again, any potential argument by Plaintiffs that claim differentiation between this claim
`and Claim 18 indicates that the patentee did not “intend” to invoke § 112, ¶ 6 by the use of the
`“code for” language fails for the same reasons as those discussed supra.
`
`7
`
`

`

`Case 1:19-cv-00859-RTH Document 111 Filed 04/12/23 Page 11 of 17
`
`
`
`meaning and insofar as a definition is needed to mean: “[a]utomatic conversion of at least a
`
`portion of the numerical values, contained in at least one of two markup documents, using one or
`
`more attributes (such as unit, magnitude, modifier, scale, measure, and adjustment) and one or
`
`more conversion factors to one common unit of measure of numerical values.” ECF 109 at *78.
`
`In the context of a similar means-plus-function term, Plaintiffs truncated the relevant function to
`
`omit the portion after the “so that,” see ECF 79 at 22, yet requested that the Court construe the
`
`term including that portion, see ECF 109 at 76-77 (listing Disputed Claim Term #13B and
`
`parties’ proposed constructions).
`
`Plaintiffs’ approach improperly broadens the function leading to an improper analysis of
`
`the corresponding structure for performing the function. A PHOSITA would recognize the
`
`constraint following the “so that” language as a necessary part of the function being described by
`
`this term. See Martin 2nd Supp. Decl. at ¶¶ 32-33; see also Martin Decl..at ¶¶ 68-69. Without it,
`
`the very nature and purpose of the recited “automatically transforming” functionality is
`
`eviscerated. The relevant function is not some “automatic transformation” in the abstract.
`
`Instead, it is the “[a]utomatic conversion of at least a portion of the numerical values, contained
`
`in at least one of two markup documents, using one or more attributes (such as unit, magnitude,
`
`modifier, scale, measure, and adjustment) and one or more conversion factors to one common
`
`unit of measure of numerical values.” ECF 109 at 78 (emphasis added).
`
`The language Plaintiffs previously sought to exclude does not merely state the result of
`
`the limitations in the claim, but rather serves to identify and define the recited “automatically
`
`transforming” function. It is essential as a description of that function. This language thus is
`
`comparable to the improperly excluded language that the Federal Circuit held to be necessary in
`
`Lockheed Martin Corp. v. Space Systems/Loral, Inc. See 324 F.3d 1308, 1319 (Fed. Cir. 2003)
`
`8
`
`

`

`Case 1:19-cv-00859-RTH Document 111 Filed 04/12/23 Page 12 of 17
`
`
`
`(claimed function may not be “improperly broadened by ignoring the clear limitations contained
`
`in the claim language. The function of a ‘means plus function’ claim must be construed to
`
`include the limitations contained in the claim language”); see also Mediatek, Inc. v. Sanyo Elec.
`
`Co., 513 F. Supp. 2d 778, 788 (E.D. Tex. 2007) (“The additional language after the ‘thereby’ in
`
`claim 11 appears to add substance to the claim limitation, and therefore must be included in the
`
`function”); Competitive Techs. v. Fujitsu Ltd., 286 F. Supp. 2d 1161, 1174 (N.D. Cal. 2003),
`
`aff’d sub nom. Competitive Techs., Inc. v. Fujitsu Ltd., 185 F. App’x 958 (Fed. Cir. 2006) (“The
`
`Court rejects [one party’s] exclusion of the words ‘to selected X and Y electrodes to discharge at
`
`least one selected address cell associated with said selected electrode’ on the basis that this
`
`would amount to ignoring clear description of the function in the claim language”).
`
`An additional dispute for this term is whether the disclosed structure implements the
`
`required functionality. Plaintiffs previously relied on the disclosure of the “X-value transformer
`
`employing conversion factors,” see ECF 79 at 22, for the relevant structure of a materially
`
`similar “means for” term. This structure is deficient considering the full scope of the recited
`
`functionality. No algorithm is disclosed for carrying out this functionality.
`
`The transformation within the RDML data viewer, described in the identified portions of
`
`columns 24-26 of the ‘383 Patent, concerns conversion of data already present in the Primary
`
`Data Store (PDS) and is activated by a user’s control of a display. This is evident in the
`
`explanation immediately preceding Plaintiffs’ citation from the patent:
`
`426 US Dollars (in thousands) per Hour; adjusted for inflation
`(1996=100).
`The user now wants to convert this to:
`‘X’ Italian Lira (in billions) per Day, in nominal lira where ‘X’ is the
`value to be calculated and the rest of the line is the measurement. The data viewer
`100 makes this transformation automatically for the user because it has
`conversion factors . . .
`
`
`9
`
`

`

`Case 1:19-cv-00859-RTH Document 111 Filed 04/12/23 Page 13 of 17
`
`
`
`‘383 Patent at 24:4-11.
`
`The specification explains that “[t]he user may simply select a new unit, magnitude, etc.
`
`from a drop-down box and make a selection,” id. at 24:28-29, and that “[t]he desired
`
`transformations may be received from a user or may be determined by the data viewer 100
`
`automatically to, for example, accommodate the addition of a new document 102 to a display of
`
`a current one,” id. at 24:39-43. Since these transformations depend on a “unit list” file, id. at
`
`24:63-25:15, any such transformations are limited to transformations where the conversion
`
`factors are stable and known in advance. See Martin 2nd Supp. Decl. at ¶¶ 35-36; see also Martin
`
`Decl. at ¶ 72.
`
`The other alleged structure Plaintiffs previously identified as related to the recited
`
`transformation is the X-value transformer. Figure 7A depicts the internal architecture of the
`
`RDML Data Viewer. Id. at 2:9-10. It shows that the X-value transformer is invoked when the
`
`RDML Data Viewer reads and parses an RDML document. The X-value transformer performs
`
`work on its input document and sends its output to the Primary Data Store (PDS). See Martin 2nd
`
`Supp. Decl. at ¶¶ 37-38; see also Martin Decl. at ¶ 74.
`
`No coherent algorithm is evident for determining which numerical values should be
`
`transformed by the X-value transformer. For example, given distinct numerical values A and B,
`
`it is unclear whether A should be converted to B’s format, B should be converted to A’s format,
`
`or whether both A and B should be converted to a further format C. See Martin 2nd Supp. Decl.
`
`at ¶¶ 39-40; see also Martin Decl. at ¶ 75.
`
`For example, the disclosure previously cited by Plaintiffs, ‘383 Patent at 18:8-14, does
`
`not disclose an algorithm. It provides an ad hoc list of exactly two scenarios and indicates what
`
`should be done in those very specific cases. See Martin 2nd Supp. Decl. at ¶ 41; see also Martin
`
`10
`
`

`

`Case 1:19-cv-00859-RTH Document 111 Filed 04/12/23 Page 14 of 17
`
`
`
`Decl. at ¶ 76. Similarly, another disclosure, ‘383 Patent at 29:64-30:21, observes that matching
`
`fields may be difficult and describes desired outcomes. Again, this description does not set forth
`
`an algorithm. Instead, it provides a statement that writing the algorithm is difficult and an ad hoc
`
`list of special cases. See Martin 2nd Supp. Decl. at ¶ 42; see also Martin Decl. at ¶ 78.
`
`As another example, the patent discloses different date formats but states only: “The X
`
`value transformer 710 puts these all into a common form.” ‘383 Patent at 30:25-26. This does
`
`not provide an algorithm for putting date formats into a common form, but rather is a mere
`
`restatement of the desired functionality. See Cellcast Tech., 150 Fed. Cl. at 385 (“[T]he
`
`specification must include language regarding how the software ensures performance of the
`
`functions, rather than simply describing the outcome.”); Grecia, 780 F. App’x at 916–17
`
`(“describing ‘the results of the operation of an unspecified algorithm’ is not sufficient to
`
`transform the disclosure of a general-purpose computer into the disclosure of sufficient structure
`
`to satisfy § 112, ¶ 6. Because the [patent] specification merely describes the results of
`
`customization without any algorithm for configuring the claimed module to obtain those results .
`
`. . the specification fails to disclose the ‘corresponding structure’ required under § 112, ¶ 6, thus
`
`rendering [the relevant claim] indefinite under § 112, ¶ 2”) (internal citations omitted);
`
`Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1383 (Fed. Cir. 2009); ePlus, Inc. v.
`
`Lawson Software Inc., 700 F.3d 509, 519 (Fed. Cir. 2012). As yet another example, the patent
`
`discloses that the X-value transformer “recognizes” a problem of non-conforming data, but it
`
`provides no indication of how the X-value transformer recognizes and resolves this problem, or
`
`any “broad set of similar circumstances.” ‘383 Patent at 30:59-62.
`
`A PHOSITA would consider that the patent does not disclose an algorithm for
`
`performing the recited transformation function. See Martin 2nd Supp. Decl. at ¶ 46; see also
`
`11
`
`

`

`Case 1:19-cv-00859-RTH Document 111 Filed 04/12/23 Page 15 of 17
`
`
`
`Martin Decl. at ¶ 82. The term is therefore indefinite, rendering Claim 1 of the ’383 Patent
`
`invalid.
`
`C.
`
`Supplemental Term 3: “code for processing. . . markup document” (‘383
`Patent, Claim 1)
`
`The third clause following the preamble of Claim 1 of the ‘383 Patent recites:
`
`code for processing at least a part of the first markup document and at least a part
`of the second markup document, resulting in a single markup document;
`
`This term is indefinite under 35 U.S.C. § 112, ¶ 6 because it claims a function but the
`
`specification fails to disclose definite structure for performing the claimed function.
`
`This term invokes means-plus-function language as it uses the black-box term “code for.”
`
`Notably, the patentee drafted this limitation in the same format as a traditional means-plus-
`
`function. Compare ‘383 Patent at 145:28-30 (Claim 1) with ‘383 Patent at 146:42-44 (Claim
`
`18).5 A PHOSITA would understand that this term does not refer to any known structures, i.e.,
`
`known or conventional programs or code from the time of the invention. Grecia, 780 F. App’x
`
`at 915. Indeed, none are referenced in the specification. Instead, a PHOSITA would understand
`
`that it describes black-box functionality. Dr. Martin’s testimony is in accord. See Martin 2nd
`
`Supp. Del. at ¶ 49.
`
`The relevant function for this term is the full clause after “code for,” thereby including
`
`the portion after “resulting in.” Any argument by Plaintiffs to shorten the relevant function to
`
`omit this portion of the function would omit the very nature and purpose of the recited
`
`“processing.” A claimed function may not be “improperly broadened by ignoring the clear
`
`limitations contained in the claim language. The function of a ‘means plus function’ claim must
`
`
`5 Again, any potential argument by Plaintiffs that claim differentiation between this claim
`term and Claim 18 indicates that the patentee did not “intend” to invoke § 112, ¶ 6 by the use of
`the “code for” language fails for the same reasons as those discussed supra.
`
`12
`
`

`

`Case 1:19-cv-00859-RTH Document 111 Filed 04/12/23 Page 16 of 17
`
`
`
`be construed to include the limitations contained in the claim language.” Lockheed Martin, 324
`
`F.3d at 1308. Therefore, the relevant function is not merely some “processing” in the abstract;
`
`instead, it is the processing which “result[s] in a single markup document.”
`
`The patent fails to disclose sufficient structure in the form of an algorithm for performing
`
`the aforementioned functionality. In the context of a similar “means for” term, Plaintiffs did not
`
`assert that the specification provided the relevant teaching but claimed that “[n]o algorithm is
`
`required under the Katz case for the ‘processing’ step here.” ECF 79 at 25.
`
`First, the specification does not disclose the relevant structure. For the corresponding
`
`term written in “means plus” format, Plaintiffs identified the Primary Data Store, without
`
`arguing that it was sufficient structure. See ECF 79 at 24-25. It is not. The specification may
`
`disclose storing a document in a Primary Data Store but this is not the same as combining at least
`
`parts of first and second markup documents into a single markup document. As Dr. Martin
`
`explains, a PHOSITA would not discern any algorithm within the specification. See Martin 2nd
`
`Supp. Del. at ¶ 56.
`
`Second, it is only in the rare circumstances where any general-purpose computer without
`
`any special programming can perform the function that an algorithm need not be disclosed. Ergo
`
`Licensing, 673 F.3d at 1364-65. See also EON Corp., 785 F.3d 616 at 621-24 (finding that the
`
`Katz exception did not apply, as the exception is limited to “basic functions of a
`
`microprocessor,” and does not extend to “special programming” even when such programming is
`
`done by “off-the-shelf” software); Spa Syspatronic, 117 Fed. Cl. at 392 (finding that the Katz
`
`exception did not apply for “function of producing an access code by one chip and then the
`
`utilization of it by another chip to grant access to its stored data goes beyond storing or retrieving
`
`data”).
`
`13
`
`

`

`Case 1:19-cv-00859-RTH Document 111 Filed 04/12/23 Page 17 of 17
`
`
`
`The term is therefore indefinite, rendering Claim 1 of the ’383 Patent invalid.
`
`III. CONCLUSION
`
`For the foregoing reason, Defendant respectfully requests that this Court find
`
`Supplemental Claim Terms 1-3 indefinite.
`
`April