Case 1:19-cv-00859-RTH Document 116 Filed 02/29/24 Page 1 of 56
`
`In the United States Court of Federal Claims
`No. 19-859
`(Filed: 29 February 2024)
`
`
`
`
`***************************************
`E-NUMERATE SOLUTIONS, INC., and
`*
`
`E-NUMERATE, LLC,
`*
`
`
`
`*
`
`
`
`Plaintiffs,
`*
`
`
`* Claim Construction; Markman Hearing;
`v.
`
`*
`Indefiniteness; Antecedent Basis;
`
`
`* Means-Plus-Function
`THE UNITED STATES,
`*
`
`
`
`*
`
`
`Defendant.
`*
`
`
`*
`***************************************
`
`
`Sean T. O’Kelly, with whom was Gerard M. O’Rourke, O’Kelly & O’Rourke, LLC, both
`of Wilmington, DE, for plaintiffs.
`
`
`Shahar Harel, Trial Attorney, Intellectual Property Section, with whom were Carrie
`Rosato, Trial Attorney, Scott Bolden, Of Counsel, Nelson Kuan, Of Counsel, Gary L. Hausken,
`Director, Commercial Litigation Branch, and Brian M. Boynton, Principal Deputy Assistant
`Attorney General, Civil Division, U.S. Department of Justice, all of Washington, DC, for
`defendant.
`
`
`CLAIM CONSTRUCTION OPINION AND ORDER
`
`
`HOLTE, Judge.
`
`Plaintiffs e-Numerate Solutions, Inc. and e-Numerate, LLC accuse the government of
`patent infringement. The government argues eighteen claim terms in four asserted patents are
`indefinite pursuant to 35 U.S.C. § 112 or must be construed pursuant to § 112, paragraph 6.
`While the parties raised numerous terms for construction, the Court’s procedures for claim
`construction, modeled after the rules of Judge Alan Albright of the United States District Court
`for the Western District of Texas, aided the Court in efficiently handling this claim construction.1
`The Court previously issued a claim construction opinion and order construing disputed terms
`not implicated by the government’s indefiniteness arguments,2 following agreement by the
`parties at a status conference to split the Markman hearing into two days.3 The Court then held a
`
`1 See also Haddad v. United States, 164 Fed. Cl. 28 (2023); Giesecke & Devrient GmbH v. United States, 163 Fed.
`Cl. 430 (2023); Wanker v. United States, 152 Fed. Cl. 219 (2021); Thales Visionix, Inc. v. United States, 150 Fed.
`Cl. 486 (2020); CellCast Techs., LLC v. United States, 150 Fed. Cl. 353 (2020).
`2 e-Numerate Sols., Inc. v. United States, 165 Fed. Cl. 237 (2023).
`3 7 Oct. 2022 Status Conference Tr. (“SC Tr.”) at 101:14–19, ECF No. 100 (“THE COURT: So the Court hopes to
`divide the Markman hearing into two days with . . . the terms in day one, as much as we can get through them, and
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`Case 1:19-cv-00859-RTH Document 116 Filed 02/29/24 Page 2 of 56
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`second Markman hearing to construe the disputed terms related to indefiniteness. This Claim
`Construction Opinion and Order construes the parties’ disputed terms implicating indefiniteness.
`For the reasons below, the Court finds: Terms 1 and 2 have antecedent basis in their respective
`independent claims and are not indefinite; Terms 3 and 4 are not indefinite because the means-
`plus-function terms are supported by algorithmic disclosure; and Terms 5, 6, and 7, as means-
`plus-function terms, are indefinite for lack of disclosed structure. Additionally, Terms 8–16
`recite “code for,” and the parties dispute whether the language should invoke means-plus-
`function interpretation under § 112, paragraph 6. The parties both agreed a term reciting “code
`for” and a term reciting “means for,” may have different definiteness conclusions, despite
`reciting the same functions. In this context, the Court finds the government has not met its
`burden to prove “code for” invokes § 112, paragraph 6. As the indefiniteness arguments for
`Terms 8–16 rely solely on interpreting the terms as means-plus-function, the Court accordingly
`finds Terms 8–16 definite. Based on the conclusions for each of these terms, and for the reasons
`below, the Court accordingly finds claim 26 of the ’816 Patent and claim 18 of the ’383 Patent
`invalid as indefinite.
`
`I.
`
`The Court outlined the patents and claims at issue in its first claim construction Order.
`
`See e-Numerate Sols., Inc. v. United States, 165 Fed. Cl. 237, 244–58 (2023). Prior to the second
`Markman hearing, the parties filed supplemental briefing on three additional terms which the
`government alleges are indefinite. See Def.’s Suppl. Claim Constr. Br. on Indefiniteness
`(“Gov’t’s Suppl. Indef. Br.”), ECF No. 111; Pl.’s Br. in Opp’n to Gov’t’s Suppl. Claim Constr.
`Br. (“Pl.’s Suppl. Indef. Br.”), ECF No. 112. The claims at issue in this indefiniteness claim
`construction Order are:
`
`
`Overview of Claims4
`
`• U.S. Patent No. 7,650,355, claim 15 (Term 1), claim 42 (Term 1);
`• U.S. Patent No. 8,185,816, claim 12 (Term 2), claim 26 (Terms 3 and 5);
`• U.S. Patent No. 9,262,383, claim 1 (Terms 8–10), claim 18 (Terms 4, 6, and 7); and
`• U.S. Patent No. 9,268,748, claim 11 (Terms 11–18).
`
`Applicable Law5
`
`A.
`
`Indefiniteness
`
`
`II.
`
`
`
`
`“A patent shall be presumed valid. . . . The burden of establishing invalidity of a patent
`or any claim thereof shall rest on the party asserting such invalidity.” 35 U.S.C. § 282(a). Issued
`patents grant the patentee “certain exclusive rights,” which may be enforced through civil actions
`for infringement pursuant to 35 U.S.C. § 271. Microsoft Corp. v. I4I Ltd. P’ship, 564 U.S. 91,
`
`
`then in day two, indefiniteness. Does that make the most sense? [THE GOVERNMENT]: Yes. [PLAINTIFFS]:
`Yeah.”).
`4 For the factual and procedural history of the case as well as a summary of the technology of the asserted patents,
`refer to the Court’s first Claim Construction Opinion and Order. See e-Numerate Sols., Inc. v. United States, 165
`Fed. Cl. 237, 243–46 (2023).
`5 For the law of claim term interpretation, refer to the Court’s first Claim Construction Opinion and Order. See
`e-Numerate Sols., Inc. v. United States, 165 Fed. Cl. 237, 258–59 (2023).
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`96 (2011). In the previous claim construction Order, the Court outlined the applicable law for
`claim construction generally. e-Numerate Sols. v. United States, 165 Fed. Cl. 237, 258–60
`(2023).
`
`
`This claim construction Order solely addresses indefiniteness. “[I]ndefiniteness is a
`question of law and in effect part of claim construction.” ePlus, Inc. v. Lawson Software, Inc.,
`700 F.3d 509, 517 (Fed. Cir. 2012). “Indefiniteness must be proven by clear and convincing
`evidence.” Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017). A
`patent specification must conclude with claims distinctly pointing out the subject matter of the
`invention. 35 U.S.C. § 112, ¶ 2.6 Patent claims must apprise “a skilled artisan [of] the scope of
`the claimed invention with reasonable certainty.” Sonix Tech. Co., 844 F.3d at 1376. If the
`claim language fails to apprise a skilled artisan with reasonable certainty, the patent claim is
`indefinite under § 112, paragraph 2. Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910
`(2014). The incorporation of general knowledge “sufficiently well established in the art and
`referenced in the patent” will help render a claim definite. Presidio Components, Inc. v. Am.
`Tech. Ceramics Corp., 875 F.3d 1369, 1377 (Fed. Cir. 2017).
`
`Claim construction may contain indefiniteness inquiries, but other invalidity arguments
`under § 112, such as lack of enablement or lack of adequate written description, are separate and
`distinct. See ePlus, Inc., 700 F.3d at 517; Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir.
`2005) (“[W]e have certainly not endorsed a regime in which validity analysis is a regular
`component of claim construction.”); see also Metabolite Lab’ys, Inc. v. Lab’y Corp. of Am.
`Holdings, 370 F.3d 1354, 1361 (Fed. Cir. 2004); Sw. Software, Inc. v. Harlequin Inc., 226 F.3d
`1280, 1297–98 (Fed. Cir. 2000). Despite invalidity conceptually overlapping with
`indefiniteness, parties must use the proper standard when arguing invalidity. See, e.g., Augme
`Techs., Inc. v. Yahoo! Inc., 755 F.3d 1326, 1340 (Fed. Cir. 2014) (“Appellants’ arguments appear
`to be based on the wrong legal standard, i.e., written description or enablement as opposed to
`indefiniteness.”); Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1358 n.2 (Fed.
`Cir. 1999) (“[D]efiniteness and enablement are analytically distinct requirements [of validity],
`even though both concepts are contained in 35 U.S.C. § 112.”).
`
`B. Means-Plus-Function Claims
`
`
`
`Patent claims may be directed to a combination comprising a series of elements. “A
`patentee may express an ‘element in a claim for a combination’ ‘as a means or step for
`performing a specified function without the recital of structure, material, or acts in support
`thereof.’” HTC Corp. v. IPCom GmbH & Co., KG, 667 F.3d 1270, 1278 (Fed. Cir. 2012)
`(quoting 35 U.S.C. § 112, para. 6). Known as means-plus-function claiming, this claim drafting
`technique pursuant to § 112, paragraph 6 results in a claim construction covering “the
`
`
`6 The paragraphs of 35 U.S.C. § 112 were replaced with newly designated subsections when the America Invents
`Act (AIA), Pub. L. No. 112–29, took effect on 16 September 2012. The four asserted patents the government argues
`implicate indefiniteness in this case all claim a priority date before the AIA was enacted, so the Court refers to the
`pre-AIA version of § 112. See e-Numerate Sols., Inc. v. United States, 165 Fed. Cl. 237, 261 (2023) (“The
`government suggested the Court clarify HTML, XML, and SGML predate 21 May 1999, the priority date claimed
`for all asserted patents except the ’842 Patent, and plaintiffs agreed.” (emphasis added)).
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`corresponding structure, material, or acts described in the specification and equivalents thereof.”
`35 U.S.C. § 112, para. 6.
`
`The presence of the word “means” creates a rebuttable presumption indicating invocation
`
`of § 112, paragraph 6 but is not the “essential inquiry” in “assess[ing] . . . whether the limitation
`in question is a means-plus-function term.” See Williamson v. Citrix Online, LLC, 792 F.3d
`1339, 1348 (Fed. Cir. 2015). Instead, the analysis turns on “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. Sufficient structure is recited “if the claim term is used in common
`parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a
`broad class of structures and even if the term identifies the structures by their function.” Skky,
`Inc. v. MindGeek, S.A.R.L., 859 F.3d 1014, 1019 (Fed. Cir. 2017) (quoting TecSec, Inc. v. Int’l
`Bus. Machs. Corp., 731 F.3d 1336, 1347 (Fed. Cir. 2013)). If both the claim and the
`specification fail to disclose sufficient structure to perform the claimed function, then the claim
`is indefinite. Williamson, 792 F.3d at 1352.
`
`III. Disputed Claim Term #1: “the step of receiving”
`
`
`Defendant’s Proposed Construction
`Indefinite.
`
`Plaintiffs’ Proposed Construction
`Not indefinite. In claim 15, the step referred
`to is “receiving a series of numerical values
`having tags indicating characteristics of the
`numerical values” in claim 1. In claim 42, the
`step referred to is “receiving a series of
`numerical values having tags indicating
`characteristics of the numerical values” in
`claim 28.
`
`
`
`The government disputes the construction of this claim term in claims 15 and 42 of the
`’355 Patent. Rev. Joint Cl. Constr. Statement Ex. A (“Rev. J. Cl. Constr.”) at 6.
`
`
`
`
`The following claim limitation highlights selected usage of the term in context:
`
`wherein the step of receiving comprises receiving tags indicating characteristics
`selected from the group consisting of: (1) value, (2) semantics, (3) format, (4)
`measurement, (5) structure, and (6) provenance.
`
`
`’355 Patent col. 57 ll. 34–37 (emphasis added).
`
`
`A.
`
`Parties’ Arguments
`
`
`
`The parties’ primary dispute is whether “the step of receiving” has antecedent basis in
`one of two terms in the corresponding independent claim. Specifically, claim 1 and claim 28 of
`the ’355 Patent recite both “receiving a series of numerical values having tags indicating
`characteristics of the numerical values” and “receiving a macro defined to perform an operation
`on the series of numerical values.” ’355 Patent col. 56 ll. 36–56, col. 58 ll. 46–67. Plaintiffs
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`argue “the phrase in the dependent claim refers to the first receiving step: ‘receiving a series of
`numerical values having tags indicating characteristics of the numerical values’” because “[t]hat
`[antecedent] phrase explicitly refers to ‘tags indicating characteristics,’” as the dependent claims
`do. Pls.’ Opening Claim Constr. Br. on Indefiniteness (“Pls.’ Indef. Br.”) at 11–12, ECF 79.
`According to plaintiffs “[t]here is simply no reason that a person [having] ordinary skill in the art
`[(PHOSITA)] would think that the limitations of claims 15 and 42 would (or could) refer to” the
`other “receiving” step, because the other “receiving” step addresses only the macro, not tags and
`their characteristics. Id. at 12. Plaintiffs assert the limitations at the end of independent claims 1
`and 28—“the step of receiving the macro comprises . . .”— see ’355 Patent col. 56 ll. 50–56, col.
`58 ll. 60–67, further supports a lack of ambiguity in the dependent claims because the macro
`“receiving” step is already clarified. Pls’ Indef. Br. at 12. e-Numerate’s expert proposes the
`Court read the phrase in the dependent claim as referring to the first receiving step; in other
`words, reading “receiving a series of numerical values having tags indicating characteristics of
`the numerical values,” as explicitly referring to “tags indicating characteristics of numerical
`values.” Decl. of Michael Smith (“Smith Decl.”) ¶ 37, ECF No. 81-9. Additionally, e-
`Numerate’s expert testifies “claims 15 and 42 further limit the characteristics recited in that
`phrase in the independent claims” and, accordingly, a PHOSITA would readily understand such.
`Id.
`
`
`The government argues the claim term could plausibly refer to the macro “receiving” step
`instead, because independent claims 1 and 28 require the macro to include meta-data, which
`“may include information such as the source of the macro[] and correspond to the provenance
`characteristic recited in [c]laims 15 and 42.” Def.’s Responsive Claim Constr. Br. on
`Indefiniteness (“Gov’t’s Resp. Indef. Br.”) at 8, ECF No. 83. The government further cites as
`support the inclusion of a “macro source” element and a “line item” in the “Document Type
`Definition” (DTD) disclosed in the ’355 Patent specification. Id. at 8–9. The government asserts
`the claim term could also refer to the first “receiving” step from independent claims 1 and 28, so
`the term is ambiguous and therefore indefinite. Id. at 9. The government proffers its expert’s
`opinion “a P[H]OSITA could not reasonably determine the scope of the ‘step of receiving’
`limitation of claims 28 and 42.” Id. The government’s expert contends “it remains unclear
`which is the proper antecedent basis for the term ‘the step of receiving comprises receiving tags’
`as recited in claims 15 and 42 as it could refer to either the first or second ‘receiving’ clause in
`the relevant independent claim.” Martin Decl. ¶ 45, ECF No. 81-7.
`
`Plaintiffs contend the government’s expert’s “opinion is not consistent with the clear
`meaning of the claim language involved and should be disregarded.” Pls.’ Indef. Br. at 12 (citing
`Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005)). Additionally, plaintiffs reply, the
`government’s “construction is contrary to the natural and logical reading of the claim language
`itself and should be rejected.” Pls.’ Reply Claim Constr. Br. on Indefiniteness (“Pls.’ Reply
`Indef. Br.”) at 3–4, ECF No. 89 (citing Innova/Pure Water, Inc. v. Safari Water Filtration Sys.,
`Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004) (“[A] claim construction analysis must begin and
`remain centered on the claim language itself, for that is the language the patentee has chosen to
`particularly point[] out and distinctly claim[] the subject matter which the patentee regards as his
`invention.” (internal quotation marks omitted) (citation omitted)). Plaintiffs further argue: “The
`issue is not how claims could be read, but rather how they would be read from the perspective of
`a” PHOSITA. Pls.’ Sur-Reply Claim Constr. Br. on Indefiniteness (“Pls.’ Sur-Reply Indef. Br.”)
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`at 1, ECF No. 92 (citing Phillips., 415 F.3d at 1313 (“The inquiry into how a [PHOSITA]
`understands a claim term provides an objective baseline from which to begin claim
`interpretation.”)).
`
`B.
`
`Analysis
`
`
`
`1.
`
`The Court’s Preliminary Construction
`
`
`
`Before the Markman hearing, the Court considered the parties’ claim construction briefs
`and all referenced materials completely in reaching a preliminary construction for this disputed
`term. The first “receiving” clause of claims 1 and 28 recites: “receiving a series of numerical
`values having tags indicating characteristics of the numerical values.” ’355 Patent col. 57 ll. 36–
`37. The second recites “the macro comprises receiving the macro including interpreted code,
`meta-data, and error handling instructions.” ’355 Patent col. 56 ll. 51–56, col. 58 ll. 46–50. In
`Nautilus, the Supreme Court clarified a claim is indefinite “if its claims, read in light of the
`specification delineating the patent, and the prosecution history, fail to inform, with reasonable
`certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig
`Instruments, Inc., 572 U.S. 898, 901 (2014). Plaintiffs have agreed to, and the Court previously
`adopted, the government’s proposed construction of the term “macro” as a “short program which
`performs one or more well-defined, generally limited tasks.” See e-Numerate Sols., Inc. v.
`United States, 165 Fed. Cl. 237, 278 (2023). Based in part on the previous construction, the
`Court preliminarily found a PHOSITA would be “reasonably certain” “the step of receiving
`comprises receiving tags” refers to the first “receiving” step in independent claims 1 and 28,
`referring to tags and characteristics, and not the second receiving step, referring to receiving a
`macro (i.e., a “short program, which performed one or more well defined, generally limited
`tasks.”). ’355 Patent col. 56 ll. 36–56, col. 58 ll. 47–67; see e-Numerate Sols., 165 Fed. Cl. at
`278. Accordingly, the Court decided the following preliminary construction: plain and ordinary
`meaning, consistent with the Court’s previous claim constructions. See Nautilus, 572 U.S. at
`910.
`
`
`
`Not indefinite.
`
`The Court’s Preliminary Construction
`
`2.
`
`The Court’s Final Construction
`
`
`
`
`
`At the Markman hearing, the parties maintained their disagreement on indefiniteness of
`“the step of receiving.” Despite Claim 1 reciting both “receiving a series of numerical values”
`and “receiving a macro,” plaintiffs assert the plain language of the claims and the similarity of
`claim terms overcome any antecedent basis issues. 9 Aug. 2023 Oral Arg. Tr. (Tr.) at 18:17–
`19:4, ECF No. 115. At oral argument, the government argued the terms were indefinite,
`alleging: (1) a PHOSITA would find ambiguity in the claims; and (2) after finding ambiguity, a
`PHOSITA would read into the claims the preferred embodiment in which macros include macro
`headers which in turn include certain tags. Tr. at 22:2–14.
`
`First, the Court addresses the government’s argument the plain language of the claim
`term is ambiguous and could be read as referring to either “receiving a series of numerical values
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`having tags indicating characteristics of the numerical values” (the “first receiving limitation”) or
`“receiving a macro defined to perform an operation on the series of numerical values” (the
`“second receiving limitation”). Gov’t’s Resp. Indef. Br. at 7. In determining ambiguity, the
`claim language is “not construed in a vacuum” but instead is read in light of “all of the intrinsic
`evidence as it pertains to the terms in question.” DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d
`1314, 1327 (Fed. Cir. 2001). Plaintiffs correctly indicate the language of dependent claim 15
`mirrors the language of independent claim 1. Tr. at 18:17–19:4 (“[PLAINTIFFS]: . . . The first
`step in claim 1 talks about receiving the series of numerical values having tags indicating
`characteristics of the numerical values. In claim 15, it says, ‘[w]herein the step of receiving [is]
`comprised of receiving tags indicating characteristics,’ and [then] it lists them.”). Claim 15
`recites “tags,” “characteristics,” and “value,” which directly mirror claim 1’s first receiving
`limitation: “receiving numerical values having tags indicating characteristics of the numerical
`values.” Compare ’355 Patent col. 57 ll. 31–34, with id. col. 56 ll. 36–37. Claim 1’s second
`receiving limitation, in contrast, recites a macro but makes no mention of “characteristics,”
`“tags,” or “values.” See id. col. 56 ll. 54–56 (“receiving a macro . . . including interpreted code,
`meta-data, and error handling instructions”). Due to the similarity of claim 15 to the first
`receiving limitation—and its dissimilarity to the second receiving limitation—a PHOSITA
`would be “reasonabl[y] certain[]” the limitations of dependent claim 15 narrow the first
`“receiving” limitation (“receiving a series of numerical values having tags”) and not the second
`“receiving” limitation (“receiving the macro”). See Nautilus, 572 U.S. at 910.
`
`
`Second, the government contends the claims are further ambiguous in light of the
`specification. See Gov’t’s Resp. Indef. Br. at 9. To arrive at this ambiguity, the government
`asserts the specification’s “preferred embodiment” implies a macro must include characteristics,
`tags, and values equivalent to those recited in claim 15. Tr. at 15:8–14 (“[THE
`GOVERNMENT:] So a macro document consists of three documents: a macro header, a macro
`code, and a macro references element. So all three are sent together in a macro document and
`the macro code corresponds to the software. But the macro header is additional information that
`must be included in this preferred embodiment.”); Tr. at. 16:16–24 (“[THE GOVERNMENT]:
`. . . when we’ve been referring to the macro, you receive the code, but you also receive other
`elements. And for those elements, you receive tags with certain attributes. . . you receive a
`macro header and you receive a macro reference, and that’s shown in the ’748 Patent, column
`97.”). In sum, the government’s theory of ambiguity requires a PHOSITA to: (1) read the claim
`in light of a preferred embodiment in the specification; (2) assume the preferred embodiment’s
`“tags with certain attributes,” Tr. at. 16:20, are necessary limitations not recited in the claims;
`and (3) find the implied necessary limitations cause ambiguity as to the scope of the claims.
`While the standard for whether a PHOSITA would be “reasonably certain” may take into
`account the specification, embodiments in the specification are not read into the claims. See
`Playtex Prod., Inc. v. Procter & Gamble Co., 400 F.3d 901, 908 (Fed. Cir. 2005) (“Claims of a
`patent may only be limited to a preferred embodiment by the express declaration of the
`patentee . . . .” (citing Karlin Tech., Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 973 (Fed. Cir.
`1999))). The Court previously construed the definition of “macro” as a “short program which
`performs one or more well-defined, generally limited tasks.” e-Numerate Sols., 165 Fed. Cl. at
`280. The Court’s construction of “macro” does not necessarily encourage a skilled artisan to
`turn to the specification to read in the government’s cited embodiment. The plain language of
`the claims, therefore, cannot support inferring the second receiving step (“receiving a macro”)
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`would include the tags or meta-data cited in claim 15. See Nautilus, 572 U.S. at 910.
`
`The Court accordingly maintains its preliminary construction and finds Term 1 is not
`
`indefinite for lack of antecedent basis. The Court additionally clarifies the “step of receiving”
`referred to by claim 15 is “receiving a series of numerical values having tags indicating
`characteristics of the numerical values” in claim 1. Additionally, the “step of receiving” referred
`to by claim 42 is “receiving a series of numerical values having tags indicating characteristics of
`the numerical values” in claim 28. See Phillips., 415 F.3d at 1312–13.
`
`
`Defendant’s Proposed Construction
`Indefinite.
`
`Plaintiffs’ Proposed Construction
`Not indefinite. In claim 15, the step referred
`to is “receiving a series of numerical values
`having tags indicating characteristics of the
`numerical values” in claim 1. In claim 42, the
`step referred to is “receiving a series of
`numerical values having tags indicating
`characteristics of the numerical values” in
`claim 28.
`
`Court’s Final Construction
`
`Not indefinite.
`
`The “step of receiving” referred to by claim 15 is “receiving a series of numerical values
`having tags indicating characteristics of the numerical values” in claim 1.
`
`The “step of receiving” referred to by claim 42 is “receiving a series of numerical values
`having tags indicating characteristics of the numerical values” in claim 28.
`
`
`IV. Disputed Claim Term #2: “the markup language”
`
`
`Plaintiffs’ Proposed Construction
`Not indefinite. Antecedent basis is implied,
`inter alia, by the use of the term “markup
`document” in claim 10.
`
`Defendant’s Proposed Construction
`Indefinite.
`
`
`
`The government disputes the construction of this claim term in claim 12 of the ’816
`Patent. Rev. J. Cl. Constr. at 11.
`
`
`
`
`The following claim limitation highlights selected usage of the term in context:
`
`The data processing system of claim 10, wherein the markup language is compliant
`with Extensible Markup Language version 1.0.
`
`
`’816 Patent col. 56 ll. 28–30 (emphasis added).
`
`
`A.
`
`Parties’ Arguments
`
`
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`The parties disagree whether the term “markup language” in claim 12 of the ’816 Patent
`has antecedent basis. Pls.’ Indef. Br. at 13; Gov’t’s Resp. Indef. Br. at 10. Plaintiffs allege
`antecedent basis is found in the ’816 patent’s abstract: “a computer markup language, referred to
`as Reusable Data Markup Language (‘RDML’) . . . .” Pls.’ Indef. Br. at 13. Plaintiffs cite
`language from the specification, which indicates “markup language is a way of embedding
`markup ‘tags,’ special sequences of characters.” Id. at 14 (quoting ’816 Patent col. 1 ll. 38–43).
`Plaintiffs contend Energizer Holdings, Inc, in which the Federal Circuit stated “despite the
`absence of explicit antecedent basis, ‘[i]f the scope of a claim would be reasonably ascertainable
`by those skilled in the art, then the claim is not indefinite,’” supports their position. Id. (quoting
`Energizer Holdings, Inc. v. ITC, 435 F.3d 1366, 1370–71 (Fed. Cir. 2006)). The parties agree
`“markup documents” means “a document that contains markup language tags,” and plaintiffs
`assert the independent claim’s use of “markup document” accordingly implies antecedent basis
`for “markup language.” See id. at 14 (citing App. to Pls.’ Indef. Br. Ex. A). e-Numerate’s expert
`contends a PHOSITA would “readily understand that a ‘markup document’ is written in a
`markup language . . . [and] [t]his is explicitly taught in the ’816 patent.” Smith Decl. ¶ 44; see
`’816 Patent col. 1 ll. 39–43.
`
`
`The parties further disagree whether the antecedent basis for “markup language” refers to
`“first markup document,” “second markup document,” or both in claim 10. See Gov’t’s Resp.
`Indef. Br. at 9–10; Pls.’ Reply Indef. Br. at 4–5. The government contends claim 10 does not
`recite any limitations regarding the first or second documents containing markup language tags
`which are compliant with Extensible Markup Language (XML) version 1.0. Gov’t’s Resp.
`Indef. Br. at 10–11. The government further argues plaintiffs’ citations to the specification fail
`to support their position. Def.’s Sur-Reply Claim Constr. Br. on Indefiniteness (“Gov’t’s Sur-
`Reply Indef. Br.”) at 3, ECF No. 91. According to the government, plaintiffs’ citations either do
`not reference markup languages or, when the specification does discuss markup languages, it
`states “[a]lthough the preferred embodiment of RDML is a markup language that is a fully
`compliant implementation of XML version 1.0, other implementations are possible.” Id. at 3
`(quoting ’816 Patent at col. 8 ll. 44–46). Lastly, the government’s expert contends “a
`[PHOSITA] would dispute e-Numerate’s contention that a markup language is differentiated
`from other languages by being ‘human-readable’ and by its use of ‘standard words, rather than
`typical programming syntax.’” Decl. of David Martin (“Martin Decl.”) ¶ 49. The expert
`highlights the term “‘markup language’ does not appear in claim 10,” and therefore does not
`have proper antecedent basis. Id. ¶ 50.
`
`
`Plaintiffs assert the government’s indefiniteness argument “ignores the longstanding rule
`of claim construction that claim language is meant to be read from the perspective of a person of
`ordinary skill in the art.” Pls.’ Indef. Reply Br. at 4. Plaintiffs contend the specification clearly
`indicates the markup documents are all in the same markup language, RDML, and the
`government has not pointed to any disclosure otherwise. Id. at 4–5; Pls.’ Sur-Reply Indef. Br. at
`3. Plaintiffs explain “RDML is compliant with the XML standard but improves upon it by using
`attributes describing the meaning of the numerical value in the markup languages tags.” Pls.’
`Sur-Reply Indef. Br. at 3.
`
`
`Analysis
`
`B.
`
`
`- 9 -
`
`

`

`Case 1:19-cv-00859-RTH Document 116 Filed 02/29/24 Page 10 of 56
`
`The Court’s Preliminary Construction
`
`1.
`
`Before the Markman hearing, the Court considered the parties’ claim construction briefs
`and all referenced materials in reaching a preliminary construction for this disputed term. The
`data processing system of claim 10 identifies both the first and second markup document but
`does not mention compliance with Extensible Markup Language. ’816 Patent col. 56 ll. 16–22.7
`The specification notes “[m]ethods and systems consistent with the present invention provide a
`markup language, referred to as Reusable Data Markup Language (‘RDML’), and a data viewer
`referred to as the RDML data viewer that is used to retrieve, manipulate and view documents in
`the RDML format.” See ’816 Patent col. 8 ll. 15–21. The Court preliminarily determined a
`PHOSITA would therefore read the term against a backdrop of these references and understand:
`(1) the markup language discussed would apply to both documents; and (2) having two separate
`markup languages would not be likely. Only reasonable certainty is required to rule out
`indefiniteness. Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). The Court
`accordingly preliminarily found claim 12, when viewed in light of the specification, allows a
`PHOSITA to identify with “reasonable certainty” a singular markup language acting as “the
`markup language” of both markup documents. The Court therefore adopted the preliminary
`construction: “Not indefinite.”
`
`
`The Court’s Preliminary Construction
`
`Not indefinite.
`
`
`
`
`
`The Court’s Final Construction
`
`2.
`
`
`At oral argument, the parties maintained their disagreement on the definiteness of “the
`markup language” in claim 12. The parties disagree whether the “first markup document” and
`the “second markup document” in claim 12 use the same markup language. Tr. at 23:21–24:13;
`Tr. at 33:12–21. The government alleges RDML documents may exist in multiple languages.
`Tr. at 32:19–33:3. Plaintiffs, however, argue a PHOSITA “would understand that they are
`written . . . in the same language.” Tr. at 33:4–7.
`
`
`The government argues the plain meaning of “fi