Case 1:19-cv-00859-RTH Document 67 Filed 01/14/22 Page 1 of 5
`
`IN THE UNITED STATES COURT OF FEDERAL CLAIMS
`
`E-NUMERATE SOLUTIONS, INC. and
`E-NUMERATE, LLC,
`Plaintiffs,
`
`v.
`THE UNITED STATES OF AMERICA,
`Defendant.
`
`C.A. No. 19-859-RTH
`
`PLAINTIFFS’ EMEREGENCY MOTION REQUESTING A
`HEARING TO ADDRESS CLAIM CONSTRUCTION
`
`Plaintiffs e-Numerate Solutions, Inc., and e-Numerate, LLC (collectively “e-Numerate”
`
`or “Plaintiffs”) hereby move this Court to hold a hearing to resolve issues regarding claim
`
`construction that have arisen between the parties. In support therefore, e-Numerate states as
`
`follows.
`
`I.
`
` Factual Background
`
`By agreement of the parties, and so ordered by the Court, claim construction briefing is
`
`presently set to begin on January 24, 2022. (D.I. 66). Some issues have arisen that the parties
`
`have tried to resolve among themselves to no avail. e-Numerate respectfully requests that the
`
`Court hold a teleconference to address these issues. Specifically, e-Numerate wishes to address
`
`the following issues with the Court: (1) the number of terms allowed to be addressed in claim
`
`construction; (2) how those terms are to be allocated between the parties; and (3) the permissible
`
`length and format of the parties’ respective opening briefs. Further background for this request
`
`is as follows.
`
`1
`
`

`

`Case 1:19-cv-00859-RTH Document 67 Filed 01/14/22 Page 2 of 5
`
`e-Numerate filed suit against the United States of America (“the Government”) on eight
`
`(8) United States Patents. These patents generally relate to the use of markup language tags to
`
`process numerical information. Six of the patents-in-suit have generally similar disclosures in
`
`their respective specifications. The remaining two patents have common disclosure between
`
`them. As the Court is well aware, a key issue in the case is the construction of the “tag”
`
`limitations in the patents-in-suit: specifically, phrases such as “tags indicating characteristics of
`
`the numerical values” and “computer-readable semantic tags that describe a semantic meaning of
`
`the data values” that are used in the patents-in-suit.
`
`This Court has Ordered the parties to follow Judge Albright’s claim construction
`
`procedures in this matter. Judge Albright’s Order sets a presumed limit for the number of terms
`
`to be construed at twelve (12) terms for each party (as e-Numerate reads Judge Albright’s Order)
`
`for cases involving more than five patents, with leave of Court required to go beyond that
`
`number. Judge Albright’s Order further sets a page limit of 45 pages for the opening briefs.
`
`The parties have followed the claim construction deadlines in this matter regarding
`
`disclosure of proposed terms for construction, disclosure of proposed definitions, and meeting
`
`and conferring to discuss the proposed definitions to see if agreement could be reached. The
`
`parties have agreed on several terms. However, the parties are at an impasse regarding 36 terms.
`
`This total counts the “tag” limitations common to all patents as a single term. It similarly counts
`
`terms/phrases common to all (or some) of the patents as a single term (e.g., “including multiple
`
`hierarchical relationships between two line items”).
`
`Upon review of the terms, it appears that the Government identified 26 of the terms, e-
`
`Numerate has identified 5 terms, and 5 of the terms are jointly proposed. Of the 26 terms
`
`2
`
`

`

`Case 1:19-cv-00859-RTH Document 67 Filed 01/14/22 Page 3 of 5
`
`identified by the Government, 18 are indefiniteness challenges to “means-plus-function” claims
`
`(8 terms) found in two of the patents, 1 claim in “code for” format (8 terms) that the Government
`
`contends should be construed as “means-plus-function” (and held indefinite), and 2 dependent
`
`claims (not in “means-plus-function” format)(containing 2 terms) that the Government contends
`
`should be held indefinite.
`
`After the required meet and confer, e-Numerate prepared tables for use in its opening
`
`brief with the following format showing the parties respective constructions:
`
`Claim Term
`
`Claims
`
`e-Numerate
`Construction
`
`Defendant
`Construction
`
`When these tables were completed (setting for the recited information), and the headings
`
`required to be set forth in Judge Albright’s Order were included, the document (without
`
`argument) totaled approximately 39 pages in length (i.e., nearly all of the permitted pages for the
`
`opening brief). The “means-plus-function” claims and the “code for” claims (i.e., the claims that
`
`the Government contends are indefinite) are primarily responsible for this length.
`
`e-Numerate prepared a similar set of tables where all claims subject to an indefiniteness
`
`challenge were removed and that exercise reduced the page count to 25 pages for just the
`
`completed tables and required headings. e-Numerate believes there are 18 terms at issue under
`
`this tabulation (counting common terms across multiple patents as a single term and counting all
`
`“tag” terms as a single term). The parties jointly seek construction of 5 of these terms, e-
`
`Numerate seeks construction of 5 of these terms, and the Government seeks construction for 8 of
`
`these terms.
`
`e-Numerate had two meet-and-confers with the Government and proposed possible
`
`resolutions. These included:
`
`3
`
`

`

`Case 1:19-cv-00859-RTH Document 67 Filed 01/14/22 Page 4 of 5
`
`•
`
`jointly seeking an increase in the page numbers allowed for the opening briefs to
`
`permit inclusion of the competing constructions in the body of the brief;
`
`•
`
`use of an agreed-upon Appendix showing competing constructions to avoid including
`
`the tables in the opening briefs; and
`
`•
`
`removing indefiniteness arguments from the claim construction briefing and
`
`proposing that the Government file a summary judgment motion at an appropriate time to raise
`
`those issues, with assurances from e-Numerate that e-Numerate would not object to such a
`
`motion as untimely. As noted above, this proposal brings the disputed number of terms to 18
`
`(i.e., below the presumptive 24 terms as e-Numerate reads the Order).
`
`For each proposed compromise, the Government conditioned any resolution on e-
`
`Numerate dropping asserted claims from the litigation, to which e-Numerate objected for at least
`
`the reason that such a condition appeared intended to gain a substantive advantage in this case
`
`over a very narrow page-limit issue created largely by the Government. Given the impact of
`
`these issues on the brief due on January 24, 2022, e-Numerate proposed contacting the Court’s
`
`chambers via a joint phone call and the Government refused to participate in any such call.
`
`Instead, the Government has taken the position that e-Numerate must file a motion seeking relief
`
`from this situation (as opposed to the parties filing a joint motion), notwithstanding that the
`
`Government is identifying a significant majority of the terms for potential claim construction.
`
`Given that e-Numerate’s Opening Claim Construction Brief is presently due on January
`
`24, 2022, this situation is prejudicing e-Numerate. Given the impending deadline, e-Numerate is
`
`making this emergency request.
`
`II.
`
` Relief Sought
`
`e-Numerate respectfully requests that the Court set a teleconference to address these
`4
`
`

`

`issues and provide e-Numerate a reasonable amount of additional time to prepare and file its
`
`opening brief after the conference once these issues are resolved.
`
`Dated: January 14, 2022
`
`Respectfully submitted,
`
`/s/ Sean T. O’Kelly
`Sean T. O’Kelly
`Gerard M. O’Rourke
`O’KELLY & O’ROURKE, LLC
`824 N. Market Street, Suite 1001A
`Wilmington, DE 19801
`302-778-4000
`sokelly@okorlaw.com
`gorourke@okorlaw.com
`
`Attorneys for Plaintiffs
`
`5
`
`Case 1:19-cv-00859-RTH Document 67 Filed 01/14/22 Page 5 of 5
`
`