Case 1:19-cv-00859-RTH Document 89 Filed 06/01/22 Page 1 of 17
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`IN THE UNITED STATES COURT OF FEDERAL CLAIMS
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`E-NUMERATE SOLUTIONS, INC. and
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`E-NUMERATE, LLC,
`Plaintiffs,
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`v.
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`THE UNITED STATES OF AMERICA,
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`Defendant.
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`C.A. No. 19-859-RTH
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`PLAINTIFFS’ REPLY CLAIM CONSTRUCTION BRIEF ON INDEFINITENESS
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`Dated: June 1, 2022
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`Respectfully submitted,
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`/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
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`Attorneys for Plaintiffs
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`

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`Case 1:19-cv-00859-RTH Document 89 Filed 06/01/22 Page 2 of 17
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`Table of Contents
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`I.
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`INTRODUCTION ................................................................................................................... 1
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`II. ARGUMENT........................................................................................................................... 3
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`A. The ‘355 Patent .................................................................................................................... 3
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`‘355 Patent, Term 6: “the step of receiving” ........................................................................... 3
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`B. The ‘816 Patent .................................................................................................................... 4
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`‘816 Patent, Term 5: “the markup language.” ......................................................................... 4
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`‘816 Patent, Term 6: “means for receiving…” ........................................................................ 5
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`‘816 patent, Term 7: “means for automatically transforming…” .......................................... 5
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`‘816 Patent, Term 8: “means for combining…” ...................................................................... 6
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`‘816 Patent, Term 9: “means for displaying…” ..................................................................... 7
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`C. The ‘383 Patent .................................................................................................................... 7
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`‘383 Patent, Term 13: “means for identifying…” ................................................................... 7
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`‘383 Patent, Term 14: “means for automatically transforming…” ........................................ 8
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`‘383 Patent, Term 15: “means for processing…” ................................................................... 9
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`‘383 Patent, Term 16: “means for causing a display” .......................................................... 10
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`D. The ‘748 Patent .................................................................................................................. 10
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`‘748 Patent Terms 7 – 16 ....................................................................................................... 10
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`‘748 Patent, Term 7: “code for storing a plurality” ............................................................... 12
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`i
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`Case 1:19-cv-00859-RTH Document 89 Filed 06/01/22 Page 3 of 17
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`‘748 Patent, Term 8: “code for processing at least…” ......................................................... 12
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`‘748 Patent, Term 9: “code for receiving a user selection…” ............................................... 12
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`‘748 Patent, Term 10: “code for receiving a user selection…” ............................................ 12
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`‘748 Patent, Term 11: “code for mapping…” ...................................................................... 12
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`‘748 Patent, Term 12: “code for outputting a presentation…” ............................................. 13
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`‘748 Patent, Term 14: “code for outputting a report…” ....................................................... 13
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`‘748 Patent, Term 16: “code for outputting at least one…” ................................................. 13
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`III. CONCLUSION .................................................................................................................. 13
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`ii
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`Case 1:19-cv-00859-RTH Document 89 Filed 06/01/22 Page 4 of 17
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`Table of Authorities
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`Cases
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`BBA Nonwovens Simpsonville, Inc. v. Superior Nonwovens, LLC, 303 F.3d 1332, 1343 (Fed. Cir. 2002) 2,
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`5, 6, 8, 9
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`CBT Flint Partners, LLC v. Return Path, Inc., 654 F.3d 1353, 1358 (Fed. Cir. 2011) ................................ 7
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`Cellcast Tech., LLC v. United States, 150 Fed. Cl. 353 (2020) ............................................................ 2, 6, 9
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`Competitive Techs. v. Fujitsu Ltd., 286 F. Supp. 2d 1161, 1174 (N.D. Cal. 2003) .................................. 5, 9
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`Competitive Techs., Inc. v. Fujitsu Ltd., 185 F. Appx. 958 (Fed. Cir. 2006). ........................................... 5, 9
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`Cypress Lake Software, Inc. v. Samsung Electronics America, Inc., 382 F. Supp. 3d 586 (E.D. Tex. 2019)
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` ................................................................................................................................................................ 12
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`Cypress Lake Software, Inc. v. ZTE (USA), Inc., 2018 WL 4035968 (E.D. Tex. August 23, 2018) .......... 12
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`Egenera, Inc. v. Cisco Sys., 972 F.3d 1367 (Fed. Cir. 2020) ...................................................................... 11
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`I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 442, 47 S. Ct. 136, 71 L. Ed. 335, 1927 Dec.
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`Comm'r Pat. 228 (1926) ............................................................................................................................ 7
`
`In re Katz Interactive Call Processing Patent Litigation, 639 F.3d. 1303 (Fed. Cir. 2011) ............. 2, 7, 8, 9
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`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004) ......... 4
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`Lockheed Martin Corp. v. Space Systems/Loral, Inc., 324 F.3d 1308, 1319 (Fed. Cir. 2003) ..... 2, 5, 6, 8, 9
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`Mediatek, Inc. v. Sanyo Elec. Co, 513 F. Supp. 2d 778, 788 (E.D. Tex. 2007) ........................................ 5, 9
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`Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003) ......................................... 7
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`Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) ................................................. 2, 4, 5, 6, 8, 9
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`UUSI, LLC v. United States, 131 Fed. Cl. 244, 263 (C.F.C. 2017) .............................................................. 7
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`Zeroclick, LLC v. Apple Inc., 891 F.3d 1003 (Fed. Cir. 2018) ................................................... 2, 10, 11, 12
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`iii
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`Case 1:19-cv-00859-RTH Document 89 Filed 06/01/22 Page 5 of 17
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`I.
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`INTRODUCTION
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`The Government’s arguments based on alleged ambiguity and/or lack of antecedent basis
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`are insufficient to establish indefiniteness under controlling Federal Circuit precedent.
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`With regard to the ‘355 patent, the natural and logical reading of “the step of receiving”
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`in claims 15 and 42 makes clear that the step referred to is the step of receiving the tags in
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`independent claims 1 and 28. Claims 15 and 42 both add limitations relating to the “tags” and,
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`as a result, are referring to the step of receiving the tags in the independent claims. In arguing
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`for an indefiniteness finding, the Government ignores the canon of claim construction that claims
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`are to be construed from the perspective of a person of ordinary skill in the art (“POSITA”). In
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`short, there is no reason for a POSITA to read the claim as the Government suggests. The
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`Government’s position should be rejected.
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`Similarly, with regard to the “markup language” limitation in the ‘816 patent, the
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`Government again ignores the mandate that claims are to be construed from the perspective of a
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`POSITA. Here, the Government and its expert concoct hypotheticals that claim 10 of the ‘816
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`patent (from which challenged claim 12 depends) should somehow be read as permitting the first
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`and second markup documents to potentially be in different markup languages. Such an
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`assertion is contrary to the ‘816 patent specification and common sense. The Government’s
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`position should be rejected here as well.
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`e-Numerate’s position on the “means-plus-function” claims at issue is quite clear. The
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`patents disclose use of conversion factors to transform numbers. As a result, the “means for
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`transforming” limitations in the ‘816 and ‘383 patents satisfy the algorithm requirement set forth
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`in the relevant case law. At most, the Government is disputing the adequacy of the disclosure,
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`1
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`Case 1:19-cv-00859-RTH Document 89 Filed 06/01/22 Page 6 of 17
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`and that cannot be resolved at this stage of the litigation pursuant to Cellcast Tech., LLC v.
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`United States, 150 Fed. Cl. 353 (2020).
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`The other “means-plus-function” limitations (“receiving”, “combining”, displaying” and
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`“processing”) recite basic computer functions that can be performed by any general-purpose
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`computer without special programming. These limitations do not require an algorithm pursuant
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`to In re Katz Interactive Call Processing Patent Litigation, 639 F.3d. 1303 (Fed. Cir. 2011). In
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`short, the patents contain an algorithm where it is required: namely, in the “means for
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`transforming” limitation.
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`The Government’s claim constructions for the “function” in the means-plus-function
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`analysis almost uniformly run from the word “means” in the claim until the semicolon
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`concluding the limitations at issue. As a result, the Government lists as “function” various
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`“wherein” and “so that” clauses found in the claim language. The Federal Circuit has explicitly
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`cautioned against an overly narrow construction of a claimed function. Lockheed Martin Corp.
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`v. Space Systems/Loral, Inc., 324 F.3d 1308, 1319 (Fed. Cir. 2003)(excluding a “whereby”
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`clause from the claimed function); see also BBA Nonwovens Simpsonville, Inc. v. Superior
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`Nonwovens, LLC, 303 F.3d 1332, 1343 (Fed. Cir. 2002)(excluding a “so that” clause from the
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`claimed function). Moreover, the Government repeatedly uses its “expert” to construe the
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`means-plus-function limitations. That is flatly disallowed by Phillips v. AWH Corp., 415 F.3d
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`1303, 1318 (Fed. Cir. 2005)
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`With regard to the “code for” claim in the ‘748 patent, the Federal Circuit’s decision in
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`Zeroclick, LLC v. Apple Inc., 891 F.3d 1003 (Fed. Cir. 2018), squarely supports e-Numerate’s
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`contention that the “code for” claims are not in “means-plus-function” format. The Government
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`has no answer for the fact that the specification teaches that MS Excel Visual Basic (a
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`2
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`Case 1:19-cv-00859-RTH Document 89 Filed 06/01/22 Page 7 of 17
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`conventional computer programming language available at the time of the invention) can be used
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`to practice the claimed inventions. Similarly, the Government ignores the code exemplars in
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`Appendix F and Appendix G of the ‘748 patent which defeat any argument that the claims are
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`directed to “black box functionality.” Finally, the Government also ignores the fact that it never
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`contended a “code for” claim in the ‘383 patent is in “means-plus-function” format. This is a
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`fundamental inconsistency in the Government’s position that compels rejection of its claim
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`constructions.
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`This is e-Numerate’s Reply Claim Construction Brief on Indefiniteness.
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`II.
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`ARGUMENT
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`Each of the patent terms will be addressed in order.
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`A. The ‘355 Patent
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`‘355 Patent, Term 6: “the step of receiving”
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`The claim language in claims 1, 15, 28 and 42 makes clear that the “step of receiving”
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`recited in claims 15 and 42 is referring to the step of “receiving a series of numerical values
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`having tags indicating characteristics of the numerical values” in claims 1 and 28. That is the
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`natural and logical reading of the involved claim language. Claims 15 and 42 specifically recite
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`“the step of receiving comprises receiving tags indicating characteristics selected from the
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`group consisting of: (1) value, (2) semantics, (3) format, (4) measurement, (5) structure, and (6)
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`provenance.”
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`The Government’s position is that the claim could “plausibly” (at least according to their
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`paid expert) be read to be referring to the step of receiving the macro. However, that
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`3
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`Case 1:19-cv-00859-RTH Document 89 Filed 06/01/22 Page 8 of 17
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`construction is contrary to the natural and logical reading of the claim language itself and should
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`be rejected. Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116
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`(Fed. Cir. 2004) (internal quotation marks and citation omitted)(“a claim construction analysis
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`must begin and remain centered on the claim language itself, for that is the language the patentee
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`has chosen to particularly point[ ] out and distinctly claim[ ] the subject matter which the
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`patentee regards as his invention.").
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`The Government cobbles together cites from the ‘355 and ‘748 patent that purportedly
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`show the “plausibility” of the Government’s position. Government’s Brief (“G.Br.” at 8 – 9.
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`They do not. Among their many defects is the basic fact that these citations are not referring to
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`receiving “tags” as set forth in the claims at issue.
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`The Court should not find these claims indefinite.
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`B. The ‘816 Patent
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`‘816 Patent, Term 5: “the markup language.”
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`The Government’s indefiniteness argument again ignores the longstanding rule of claim
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`construction that claim language is meant to be read from the perspective of a person of ordinary
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`skill in the art. Phillips, 415 F.3d at 1313 ("The inquiry into how a person of ordinary skill in the
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`art understands a claim term provides an objective baseline from which to begin claim
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`interpretation."). Here, the Government claims that it is “reasonable” that the markup documents
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`of claim 10 could, somehow, be in different markup languages and that a POSITA would not
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`understand which document the “markup language” in claim 12 references. That is a manifestly
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`unreasonable construction and contrary to the specification of the ‘816 patent. See, e.g., col. 3,
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`line 65 – col. 4, line 6; col. 8, lines 15 – 55. The specification is clear that the documents are all
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`4
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`Case 1:19-cv-00859-RTH Document 89 Filed 06/01/22 Page 9 of 17
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`in the same markup language and the Government has not pointed to any disclosure teaching
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`otherwise.1
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`‘816 Patent, Term 6: “means for receiving…”
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`The Government has conceded that e-Numerate’s claim construction for this term is
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`correct.
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`‘816 patent, Term 7: “means for automatically transforming…”
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`The Government improperly adds a “so that” clause in the function for the means-plus-
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`function claim. That is inappropriate in light of controlling Federal Circuit precedent. See, e.g.,
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`Lockheed Martin Corp. v. Space Systems/Loral, Inc., 324 F.3d 1308, 1319 (Fed. Cir.
`
`2003)(excluding a “whereby” clause from the claimed function); see also BBA Nonwovens
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`Simpsonville, Inc. v. Superior Nonwovens, LLC, 303 F.3d 1332, 1343 (Fed. Cir. 2002)(excluding
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`a “so that” clause from the claimed function).2 This is the first of many examples where the
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`Government includes all language in the limitation from the word “means” to the concluding
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`semicolon. The Federal Circuit specifically rejects this approach to construing “function.” The
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`Government also compounds its error by having Dr. Martin construe the claim language in clear
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`violation of Phillips. Here, the claim uses “so that” and the Court in BBA Nonwovens excluded a
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`“so that” phrase from the claimed “function.”
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`1 The Government relies on Dr. Martin’s declaration to bolster its arguments. Dr. Martin’s
`declaration is an inappropriate use of extrinsic evidence under Phillips and should be rejected by
`the Court. Phillips, 415 F.3d at 1318.
`2 The Government cites Mediatek, Inc. v. Sanyo Elec. Co, 513 F. Supp. 2d 778, 788 (E.D. Tex.
`2007), and 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. Appx. 958 (Fed. Cir. 2006). These
`cases are fact-specific applications of the rules set forth in Lockheed and BBA Nonwovens and do
`not compel the Government’s proposed construction.
`5
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`Case 1:19-cv-00859-RTH Document 89 Filed 06/01/22 Page 10 of 17
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`
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`The Government argues that this term is indefinite because no algorithm is disclosed.
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`The Government is wrong. The ‘816 patent clearly teaches the use of conversion factors to
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`transform numbers. See, e.g., col. 25, line 41 – col. 27, line 45. Thus, the fundamental flaw in
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`the Government’s claim construction is that this term falls squarely into the situation described
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`by Cellcast Technologies, 150 Fed. Cl. at 380. Specifically, an algorithm is disclosed and there
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`is a dispute as to its adequacy. This dispute cannot be resolved at this stage of the litigation.
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`The Government’s request that the Court adjudicate this issue now (G.Br. at 16 – 17) is
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`wholly inappropriate. e-Numerate has been very clear that it believes no expert testimony should
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`be used by either party during claim construction in light of the clear teaching of Phillips.
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`Instead, the parties should issue full expert reports on invalidity at the appropriate time and
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`resolve this issue either on summary judgment or at trial. Even at this preliminary stage, there
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`are conflicting expert declarations that preclude resolution of this issue on summary judgment.
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`‘816 Patent, Term 8: “means for combining…”
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`The Government improperly limits the function in this claim for the same reasons as with
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`the other claims. Specifically, the Government is defining “function” too narrowly in
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`contravention of Lockheed Martin Corp. v. Space Systems/Loral, Inc., 324 F.3d 1308, 1319 (Fed.
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`Cir. 2003)(excluding a “whereby” clause from the claimed function), and BBA Nonwovens
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`Simpsonville, Inc. v. Superior Nonwovens, LLC, 303 F.3d 1332, 1343 (Fed. Cir. 2002)(excluding
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`a “so that” clause from the claimed function).
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`The Government also criticizes this limitation because it refers to “single data” instead of
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`“single data set.” It is well-settled law that, in a patent infringement suit, a [trial] court may
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`correct an obvious error in a patent claim." UUSI, LLC v. United States, 131 Fed. Cl. 244, 263
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`6
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`Case 1:19-cv-00859-RTH Document 89 Filed 06/01/22 Page 11 of 17
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`(C.F.C. 2017); CBT Flint Partners, LLC v. Return Path, Inc., 654 F.3d 1353, 1358 (Fed. Cir.
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`2011) (citing I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 442, 47 S. Ct. 136, 71 L. Ed.
`
`335, 1927 Dec. Comm'r Pat. 228 (1926)); Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d
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`1348, 1354 (Fed. Cir. 2003). The Court should do that here and construe “single data” as “single
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`data set.”
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`The last limitation of claim 26 of the ‘816 patent refers to “single data set” as do claims
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`1, 3 – 9, 10, 13 – 16, 17, 19 – 25 and 27. This is exactly the type of situation where correction by
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`the Court is appropriate.
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`The Government has provided no authority for why “combining” somehow requires an
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`algorithm. Such a function is performable by any general-purpose computer without any special
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`programming, and the Government has not identified any reason why such a basic function could
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`not be so performed. In fact, the ‘816 patent explicitly teaches a “collection data structure.”
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`‘816 patent at col. 33, lines 26 – 33. As a result, this term falls squarely within the exception
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`articulated in In re Katz Interactive Call Processing Patent Litigation, 639 F.3d. 1303 (Fed. Cir.
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`2011).
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`‘816 Patent, Term 9: “means for displaying…”
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`The Government has conceded that e-Numerate’s claim construction for this term is
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`correct.
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`C. The ‘383 Patent
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`‘383 Patent, Term 13: “means for identifying…”
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`7
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`Case 1:19-cv-00859-RTH Document 89 Filed 06/01/22 Page 12 of 17
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`The Government again includes every word from “means” to the concluding semi-colon
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`in the claim limitation as the “function.” That is manifestly inappropriate under Lockheed Martin
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`Corp. v. Space Systems/Loral, Inc., 324 F.3d 1308, 1319 (Fed. Cir. 2003)(excluding a “whereby”
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`clause from the claimed function), and BBA Nonwovens Simpsonville, Inc. v. Superior
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`Nonwovens, LLC, 303 F.3d 1332, 1343 (Fed. Cir. 2002)(excluding a “so that” clause from the
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`claimed function). Specifically, the Government wants to include a lengthy “wherein” clause in
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`the function when there is simply no reason to do so. Yet again, the Government also has its
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`expert, Dr. Martin, construing the claim language in contravention of Phillips.
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`As for the supposed lack of an algorithm, this limitation does not require one under In re
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`Katz Interactive Call Processing Patent Litigation, 639 F.3d. 1303 (Fed. Cir. 2011). The
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`specification explicitly teaches a “reader.” See ‘383 Patent Figure 7A box 704. The Government
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`has not identified any reason why such a basic function could not be performed by a general-
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`purpose computer without special programming. As a result, the Government’s indefiniteness
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`challenge should be rejected.
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`‘383 Patent, Term 14: “means for automatically transforming…”
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`This term tracks the issue on the “means for automatically transforming” in the ‘816
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`patent, Term 7. As with the ‘816 patent, the Government improperly adds a “so that” clause in
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`the function for the means-plus-function claim. That is inappropriate in light of controlling
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`Federal Circuit precedent. See, e.g., Lockheed Martin Corp. v. Space Systems/Loral, Inc., 324
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`F.3d 1308, 1319 (Fed. Cir. 2003)(excluding a “whereby” clause from the claimed function); see
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`also BBA Nonwovens Simpsonville, Inc. v. Superior Nonwovens, LLC, 303 F.3d 1332, 1343 (Fed.
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`8
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`Case 1:19-cv-00859-RTH Document 89 Filed 06/01/22 Page 13 of 17
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`Cir. 2002)(excluding a “so that” clause from the claimed function).3 The Government again
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`compounds its error by having its expert, Dr. Martin, construe the claim language in clear
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`violation of Phillips. Here, the claim uses “so that” and the Court in BBA Nonwovens excluded a
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`“so that” phrase from the claimed “function.”
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`
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`The Government argues that this term is indefinite because no algorithm is disclosed.
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`The Government is wrong. The ‘383 patent clearly teaches the use of conversion factors to
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`transform numbers. See, e.g., col. 24, line 1 – col. 26, line 10. Thus, the fundamental flaw in the
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`Government’s claim construction is that this term falls squarely into the situation described by
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`Cellcast Technologies, 150 Fed. Cl. at 380. Specifically, an algorithm is disclosed and there is a
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`dispute as to its adequacy. This dispute cannot be resolved at this stage of the litigation.
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`‘383 Patent, Term 15: “means for processing…”
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`The issues on this claim track the issues with the ‘816 patent “means for combining.”
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`Here, the parties agree on the function. The Government has provided no authority for why
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`“processing” data into a single markup document somehow requires an algorithm. Such a
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`function is performable by any general-purpose computer without any special programming, and
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`the Government has not identified any reason why such a basic function could not be so
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`performed. As with the ‘816 patent, the ‘383 patent teaches a “collection data structure.” Col.
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`31, lines 45 – 67. As a result, this term falls squarely within the exception articulated in In re
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`Katz Interactive Call Processing Patent Litigation, 639 F.3d. 1303 (Fed. Cir. 2011).
`
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`3 The Government cites Mediatek, Inc. v. Sanyo Elec. Co, 513 F. Supp. 2d 778, 788 (E.D. Tex.
`2007), and 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. Appx. 958 (Fed. Cir. 2006). These
`cases are fact-specific applications of the rules set forth in Lockheed and BBA Nonwovens and do
`not compel the Government’s proposed construction.
`9
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`Case 1:19-cv-00859-RTH Document 89 Filed 06/01/22 Page 14 of 17
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`‘383 Patent, Term 16: “means for causing a display”
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`The Government has conceded that e-Numerate’s claim construction for this term is
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`correct.
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`D. The ‘748 Patent
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`‘748 Patent Terms 7 – 16
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`The Government devotes almost 15 full pages of its brief arguing that the “code for”
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`limitations in claim 11 of the ‘748 patent are in means-plus function format. The fact that the
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`‘748 patent specification teaches use of conventional computer code such as MS Excel Visual
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`Basic to practice the claimed inventions is entirely glossed over in the Government’s analysis.
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`See, e.g., ‘748 Patent at col. 45, lines 25 – 35 and lines 49 - 54. The same is true of computer
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`code contained in Appendix F and G of the ‘748 patent. Finally, the Government takes an
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`ostrich-like approach to the fact that claim 1 of the ‘383 patent is in “code for” format and the
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`Government does not assert that claim is in “means-plus-function” format. The Government’s
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`position is fundamentally inconsistent and unsustainable. It should be rejected.
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`As discussed in e-Numerate’s opening brief, the Federal Circuit’s decision in Zeroclick,
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`LLC v. Apple Inc., 891 F.3d 1003 (Fed. Cir. 2018), squarely supports e-Numerate. The Federal
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`Circuit ruled that as used in the patent-in-suit, “user interface code” was not a nonce word used
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`as a substitute for “means.” The Federal Circuit stated that the “mere fact that the disputed
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`limitations incorporate functional language does not automatically convert the words into means
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`for performing such function.” Id. at 1008. Second, the Federal Circuit held that the district court
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`had removed the claim term from its context. Id. As the Federal Circuit noted, the term “user
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`interface code” was “used not as a generic term[] or black box recitations of structure or
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`10
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`Case 1:19-cv-00859-RTH Document 89 Filed 06/01/22 Page 15 of 17
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`abstractions, but rather as specific references to conventional graphical user interface programs
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`or code, existing in prior art at the time of the inventions.” Id. Both of those rationales apply
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`here.
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`A person of skill in the art reviewing the ‘748 patent would conclude that the claimed
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`inventions could be practiced using conventional programming languages available in the art at
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`the time of the invention. Appendix F and Appendix G of the ‘748 patent unequivocally
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`demonstrate that fact. Both of these appendices are written in the Microsoft Excel Visual Basic
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`programming language. See also Smith Dec. at par. 65. This is the exact same type of “specific
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`reference[] to conventional graphical user interface programs or code, existing in prior art at the
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`time of the inventions” that the Federal Circuit relied on in Zeroclick. There is no reason to
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`depart from that holding in this case.
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`The language of claim 11 of the ‘748 patent itself also supports that analysis. Claim 11
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`recites in its preamble: “A computer program product embodied on a non-transitory computer
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`readable medium.” (emphasis supplied). The body of claim 11 uses the expression “where the
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`computer program product is configured” on three occasions. See col. 143, lines 35 – 36, 50-51,
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`and 58; see also claims 12 – 18 and 20 (using the same expression). Thus, the language of the
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`claim itself indicates that it is referring to conventional computer code and not mere “black box
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`functionality.”
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`The Federal Circuit’s decision in Egenera, Inc. v. Cisco Sys., 972 F.3d 1367 (Fed. Cir.
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`2020), used the term “logic to modify,” not “code for.” It is distinguishable for at least that
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`reason. However, each case must be decided on its facts. Here, the ‘748 patent unequivocally
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`shows computer code in at least Appendix F and Appendix G. The disclosure is not mere “black
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`box” functionality.
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`11
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`

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`Case 1:19-cv-00859-RTH Document 89 Filed 06/01/22 Page 16 of 17
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`The Government’s reliance on Cypress Lake Software, Inc. v. Samsung Electronics
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`America, Inc., 382 F. Supp. 3d 586 (E.D. Tex. 2019), and Cypress Lake Software, Inc. v. ZTE
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`(USA), Inc., 2018 WL 4035968 (E.D. Tex. August 23, 2018), is similarly unavailing. These are
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`non-binding district court decisions that reach a different conclusion on claims using “code for”
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`language than the binding Zeroclick, LLC v. Apple Inc., 891 F.3d 1003 (Fed. Cir. 2018),
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`precedent. Zeroclick is binding precedent and should be followed for the reasons set forth.
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`Claim differentiation also compels rejection of the Government. Specifically, when e-
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`Numerate wanted to claim in means-plus-function format, it did so. See ‘816 patent claim 26,
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`‘383 patent, claim 18. That is an additional reason to adopt e-Numerate’s construction.
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`‘748 Patent, Term 7: “code for storing a plurality”
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`This term is not in means-plus-function format for the reasons set forth above.
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`‘748 Patent, Term 8: “code for processing at least…”
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`This term is not in means-plus-function format for the reasons set forth above.
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`‘748 Patent, Term 9: “code for receiving a user selection…”
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`This term is not in means-plus-function format for the reasons set forth above.
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`‘748 Patent, Term 10: “code for receiving a user selection…”
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`This term is not in means-plus-function format for the reasons set forth above. On this
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`limitation, the Government explicitly relies on Appendix F to the ‘748 patent and does not
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`contend that this limitation is indefinite.
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`‘748 Patent, Term 11: “code for mapping…”
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`12
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`

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`Case 1:19-cv-00859-RTH Document 89 Filed 06/01/22 Page 17 of 17
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`This term is not in means-plus-function format for the reasons set forth above.
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`‘748 Patent, Term 12: “code for outputting a presentation…”
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`This term is not in means-plus-function format for the reasons set forth above.
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`‘748 Patent, Term 14: “code for outputting a report…”
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`This term is not in means-plus-function format for the reasons set forth above.
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`‘748 Patent, Term 16: “code for outputting at least one…”
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`This term is not in means-plus-function format for the reasons set forth above.
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`III. CONCLUSION
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`For the reasons set forth, Plaintiff respectfully requests that this Court adopt its proposed
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`claim construction and not find any asserted claim indefinite.
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`Dated: June 1, 2022
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`Respectfully submitted,
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`/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
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`Attorneys for Plaintiffs
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`13
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