Case 1:19-cv-00859-RTH Document 69 Filed 01/21/22 Page 1 of 7
`
` IN THE UNITED STATES COURT OF FEDERAL CLAIMS
`
`Plaintiffs,
`
`
`
`v.
`
`
`E-NUMERATE SOLUTIONS, INC. and
`E-NUMERATE, LLC,
`
`
`
`
`
`THE UNITED STATES,
`
`
`
`
`
`
`Defendant.
`
`
`
`
`
`
`
`
`
`No. 19-859 C
`
`Judge Ryan T. Holte
`
`
`
`
`
`
`
`DEFENDANT’S RESPONSE IN OPPOSITION
`TO E-NUMERATE’S EMERGENCY MOTION
`
`The United States (Defendant or “Government”) submits this Response to Plaintiffs’ e-
`
`Numerate Solutions, Inc. and e-Numerate, LCC (collectively, Plaintiffs or “e-Numerate”)
`
`Emergency Motion (ECF No. 67) and respectfully requests that the Court deny e-Numerate’s
`
`request to increase the number of disputed terms to be briefed beyond 15 terms. Plaintiffs offer
`
`no excuse to justify their late request to dramatically raise the number of disputed terms to be
`
`briefed beyond the Court’s default limits despite being aware of the disputed terms for months and
`
`therefore this Court should deny this late request. Separately, Defendant does not oppose
`
`Plaintiffs’ request to hold a status conference and will participate once the hearing is scheduled.
`
`Further and contrary to Plaintiffs’ suggestion, Defendant does not oppose – and already agreed to
`
`join in a motion with Plaintiffs – to allow the parties to share a common appendix with the disputed
`
`terms and the parties’ proposed constructions, such that the appendix would not affect the pages
`
`limits for opening the briefs. In short, Plaintiffs’ motion and additional request to the Court via
`
`email represent a conglomeration of issues for the purpose of delay.
`
`

`

`Case 1:19-cv-00859-RTH Document 69 Filed 01/21/22 Page 2 of 7
`
`
`
`I.
`
`BACKGROUND
`
`This Court entered a claim construction schedule in which the parties would first exchange
`
`claim terms for construction, then exchange proposed claim constructions for those terms, then
`
`disclose extrinsic evidence they may rely upon for claim construction, and finally meet and confer
`
`to narrow terms in dispute and exchange revised constructions. ECF No 58; ECF No. 64. While
`
`Plaintiffs filed a motion seeking to invert the order of the claim construction briefing (ECF No.
`
`62), the Court maintained the original sequencing in which Plaintiffs would file the opening brief.
`
`ECF No. 64.
`
`The parties began the claim construction process by identifying claims terms for
`
`construction on October 8, 2021. On October 25, 2021, Defendant provided proposed
`
`constructions for both parties’ identified terms; Plaintiffs, however, only provided proposed
`
`constructions for the terms they previously identified. Defendant inquired whether Plaintiffs’
`
`silence with respect to the terms Defendant had identified indicated that Plaintiffs would not urge
`
`any construction beyond plain and ordinary for these terms. Plaintiffs responded that “we do not
`
`understand the Judge’s Order to require that we propose definitions for your terms in the past
`
`exchange. . . You should not assume that we will simply say ‘plain and ordinary meaning’ for the
`
`terms and phrases you identified (but we have not).” Ex. A (Email from G. O’Rourke to S. Harel
`
`dated Oct. 28, 2021). Almost one month later, Plaintiffs finally provided claim constructions for
`
`terms identified by Defendant. Ex. B (Disclosure by Plaintiffs dated Nov. 19, 2021).
`
`
`
`On December 3, 2021, Defendant timely served its disclosure of extrinsic evidence. This
`
`included a declaration from Dr. David Martin1 providing expert opinions regarding how a person
`
`
`1 Defendant previously disclosed Dr. Martin to Plaintiffs and provided his curriculum vitae, a
`signed undertaking under the protective order, and a listing of work on other engagements. Ex. C
`(Email from S. Harel to G. O’Rourke dated July 13, 2021).
`
`2
`
`
`

`

`Case 1:19-cv-00859-RTH Document 69 Filed 01/21/22 Page 3 of 7
`
`
`
`of ordinary skill in the art would construe certain disputed terms. Ex. D (Defendant’s Disclosure
`
`of Extrinsic Evidence); Ex. E (Martin Decl.). Plaintiffs also provided their disclosure of extrinsic
`
`evidence but this was limited to prior art, a technical dictionary, and an identification of a webpage.
`
`Ex. F (Plaintiffs’ Disclosure of Extrinsic Evidence). Plaintiffs’ disclosure did not reference any
`
`expert or expert opinion and to date Plaintiffs have never sought to clear any potential experts
`
`under the protective order or provided their curriculum vitae. Almost two weeks later, Plaintiffs
`
`stated “[w]e are contemplating serving a rebuttal declaration to the Martin declaration that you
`
`have provided.” Ex. G (Email from G. O’Rourke to S. Harel dated Dec. 15, 2021l). To date,
`
`Plaintiffs have not provided any expert declaration, identified a potential declarant, or even
`
`explained the scope of such a declaration beyond this one sentence.
`
`II.
`
`ARGUMENT
`
`A.
`The Court Should Deny Plaintiffs’ Late Request to Dramatically Expand the
`Number of Terms to be Briefed
`
`Plaintiffs’ motion represents an “emergency” of its own creation. In this action, Plaintiffs
`
`have asserted more than 90 claims across 8 patents and have known of Defendant’s proposed claim
`
`constructions since late October 2021, but never moved the Court to expand the number of terms
`
`from the default of 12 terms to the 36 disputed terms it referenced in its it motion. Additionally,
`
`Plaintiffs had the benefit of a detailed expert declaration to guide them in efforts to meaningfully
`
`cull down the vast number of asserted claims. Rather, Plaintiffs merely moved for a status
`
`conference almost one week prior to their opening brief. While Judge Albright’s rules contemplate
`
`“reasonable requests” to adjust the claim construction briefing in “exceptional circumstances,”
`
`Plaintiffs here seek to expand the number of disputed terms to be briefed by three times the default
`
`amount. Notably, Judge Albright has denied similar late motions to expand the number of terms
`
`to be briefed when a party only sought to expand the number of terms by 4. Flexiworld
`
`3
`
`
`

`

`Case 1:19-cv-00859-RTH Document 69 Filed 01/21/22 Page 4 of 7
`
`
`
`Technologies, Inc. v. Amazon.com, Inc. et al., No. 6:20-CV-00553-ADA (W.D. Tex. Dec. 2, 2020)
`
`(text order denying party’s request to expand the number of claim terms briefed from 12 to 16 but
`
`allowing the party to brief 14 terms); 2 Bluebonnet Internet Media Services, LLC v. Pandora Media,
`
`LLC, No. 6:20-CV-00731-ADA (W.D. Tex. Apr. 7, 2021) (text order denying an agreed motion,
`
`filed one week prior to the opening brief, to increase the claim terms from 10 to 12 and striking
`
`the opening brief).3 This Court should similarly deny Plaintiffs’ late request for a significant
`
`expansion of the Court’s default rules. Rather, Plaintiffs may withdraw their assertion of claims
`
`comprising significant number of disputed terms as this will streamline the process in a reasonable
`
`manner.
`
`B.
`Plaintiffs’ Second Request Seeks Guidance from the Court, but Plaintiffs
`Never Discussed the Issue with Defendant
`
`In their Motion, Plaintiffs indicated that they sought to address the issue of “how those
`
`terms are to be allocated between the parties.” ECF No. 67 at 1. However, Plaintiffs never
`
`presented this as an issue to Defendant. To the extent Defendant understands Plaintiffs’ request,
`
`it disputes the implication that certain terms are “Defendant’s” and that other terms are
`
`“Plaintiffs’.” As discussed above, while Defendant identified certain terms for which Plaintiffs
`
`initially failed to provide any construction, Plaintiffs ultimately provided constructions and
`
`declined a “plain and ordinary construction.” Therefore, any suggestion that certain terms are one
`
`parties’ or another is meaningless. Both parties are expected to construe the disputed terms within
`
`the limits set by the Court regardless of which party originally identified the terms. Therefore,
`
`
`2 Ex H (docket listing with text order).
`
`3 Ex. I (docket listing with text order).
`
`4
`
`
`

`

`Case 1:19-cv-00859-RTH Document 69 Filed 01/21/22 Page 5 of 7
`
`
`
`Defendant understands this issue as a request from Plaintiffs for guidance from the Court as to the
`
`claim construction brief.
`
`C.
`Defendant Previously Agreed to Plaintiffs’ Request to Allow an Appendix with
`the Claim Terms
`
`Plaintiffs’ third request is directed to “the permissible length and format of the parties’
`
`respective opening briefs.” Id. Plaintiffs further reference the “use of an agreed-upon Appendix
`
`showing competing constructions to avoid including the tables in the opening briefs.” Id. at 2.
`
`However, Defendant indicated it would not oppose this motion and at Plaintiffs’ request further
`
`request agreed to join in such a motion. Ex. J (Email from S. Harel to G. O’Rourke dated Jan. 13,
`
`2022) (“In terms of the page limits we can join in a motion with e-Numerate that the parties may
`
`use a common appendix that includes the list of terms with both sides’ proposed constructions
`
`without any attorney argument as shown in the attached. However, given that you have refused to
`
`provide this chart we cannot join in with respect to any representations as to the length of this
`
`appendix”). Plaintiffs’ assertion that Defendant conditioned an agreement on this issue with a
`
`reduction in terms is false. Id. (email indicating that the issue of number of disputed terms would
`
`be opposed but agreeing to a common appendix in a joint motion). Defendant only requested that
`
`Plaintiffs provide the chart so that it can confirm that all disputed terms were properly listed and
`
`that the page length it asserted for the appendix was accurate. Id. Notably, Plaintiffs have refused
`
`to provide their draft chart to Defendant. This purported dispute is disingenuous and a waste of
`
`the Court’s resources.
`
`III. CONCLUSION
`
`Therefore, this Court should deny Plaintiffs’ requested relief.
`
`5
`
`
`

`

`Case 1:19-cv-00859-RTH Document 69 Filed 01/21/22 Page 6 of 7
`
`
`
`January 21, 2022
`
`
`
`
`
`
`
`
`
`
`
`
`
`Of Counsel:
`SCOTT BOLDEN
`NELSON KUAN
`Department of Justice
`
`
`
`
`
`
`
`Respectfully submitted,
`
`BRIAN M. BOYNTON
`Acting Assistant Attorney General
`
`GARY L. HAUSKEN
`Director
`
`s/ Shahar Harel
`SHAHAR HAREL
`Trial Attorney
`Commercial Litigation Branch
`Civil Division
`Department of Justice
`Washington, DC 20530
`Email: Shahar.Harel@USDOJ.gov
`Telephone:
`(202) 305-3075
`Facsimile:
`(202) 307-0345
`COUNSEL FOR THE UNITED STATES OF AMERICA
`
`
`
`
`
`
`
`6
`
`
`

`

`Case 1:19-cv-00859-RTH Document 69 Filed 01/21/22 Page 7 of 7
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that a true copy of the foregoing was sent by e-mail this 21st day of January 2022
`
`to:
`
`
`
`
`
`
`
`
`Of Counsel:
`SCOTT BOLDEN
`NELSON KUAN
`U.S. Department of Justice
`
`
`
`
`
`
`
`
`
`Date: January 21, 2022
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`s/ Shahar Harel
`SHAHAR HAREL
`Trial Attorney
`Intellectual Property Section
`Commercial Litigation Branch
`Civil Division
`U.S. Department of Justice
`Washington, DC 20530
`Shahar.Harel@usdoj.gov
`Tel: (202) 305-3075
`Fax: (202) 307-0345
`
`Attorney for the Defendant,
`the United States of America.
`
`
`
`
`
`7
`
`
`