Case 1:19-cv-00859-RTH Document 91 Filed 07/01/22 Page 1 of 18
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`IN THE UNITED STATES COURT OF FEDERAL CLAIMS
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`
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`Plaintiffs,
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`v.
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`E-NUMERATE SOLUTIONS, INC. and
`E-NUMERATE, LLC,
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`
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`THE UNITED STATES,
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`No. 19-859 C
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`Judge Ryan T. Holte
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`Defendant.
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`DEFENDANT’S SUR-REPLY CLAIM CONSTRUCTION
`BRIEF ON INDEFINITENESS
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`Of Counsel:
`SCOTT BOLDEN
`NELSON KUAN
`U.S. Department of Justice
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`
`July 1, 2022
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`
`BRIAN M. BOYNTON
`Principal Deputy Assistant Attorney
`General
`
`GARY L. HAUSKEN
`Director
`
`SHAHAR HAREL
`Trial Attorney
`Commercial Litigation Branch
`Civil Division
`Department of Justice
`Washington, DC 20530
`shahar.harel@usdoj.gov
`Telephone: (202) 305-3075
`Facsimile: (202) 307-0345
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`COUNSEL FOR THE DEFENDANT,
`THE UNITED STATES
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`I.
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`II.
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`Case 1:19-cv-00859-RTH Document 91 Filed 07/01/22 Page 2 of 18
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`TABLE OF CONTENTS
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`INTRODUCTION ...............................................................................................................1
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`ARGUMENT .......................................................................................................................1
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`A.
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`1.
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`B.
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`1.
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`2.
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`3.
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`4.
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`5.
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`The ‘355 Patent ........................................................................................................1
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`‘355 Patent, Term 6: “the step of receiving” ...........................................................1
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`The ‘816 Patent ........................................................................................................3
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`‘816 Patent, Term 5: “the markup language” ..........................................................3
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`‘816 Patent, Term 6: “means for receiving . . .” ......................................................4
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`‘816 Patent, Term 7: “means for automatically transforming. . .”...........................4
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`‘816 Patent, Term 8: “means for combining . . .” ....................................................8
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`‘816 Patent, Term 9: “means for displaying …” ...................................................10
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`C.
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`The ‘383 Patent ......................................................................................................10
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`1.
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`2.
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`3.
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`4.
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`D.
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`1.
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`‘383 Patent, Term 13: “means for identifying . . .” ...............................................10
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`‘383 Patent, Term 14: “means for automatically transforming . . . ” .....................11
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`‘383 Patent, Term 15: “means for processing . . .” ................................................11
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`‘383 Patent, Term 16: “means for causing a display…” .......................................11
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`The ‘748 Patent ......................................................................................................12
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`‘748 Patent, Terms 7-16 .........................................................................................12
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`III.
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`CONCLUSION ..................................................................................................................13
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`ii
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`Case 1:19-cv-00859-RTH Document 91 Filed 07/01/22 Page 3 of 18
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`CASES
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`TABLE OF AUTHORITIES
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`
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`BBA Nonwovens Simpsonville, Inc. v. Superior Nonwovens, LLC, 303 F.3d 1332 (Fed.
`Cir. 2002) .............................................................................................................................. 5, 6
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`Cellcast Tech., LLC v. United States, 150 Fed. Cl. 353 (2020) ...................................................... 7
`
`Competitive Techs. v. Fujitsu Ltd., 286 F. Supp. 2d 1161 (N.D. Cal. 2003) .................................. 6
`
`Cypress Lake Software, Inc. v. Samsung Electronics America, Inc., 382 F. Supp. 3d 586
`(E.D. Tex. 2019) ..................................................................................................................... 15
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`Digital Retail Apps, Inc. v. H-E-B, LP, No. 6-19-CV-00167-ADA, 2020 WL 376664
`(W.D. Tex. Jan. 23, 2020) ......................................................................................................... 9
`
`Egenera Inc. v. Cisco Systems, Inc., 972 F.3d 1367 (Fed. Cir. 2020) .......................................... 15
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`EON Corp. IP Holdings LLC v. AT & T Mobility LLC, 785 F.3d 616 (Fed. Cir. 2015) .............. 11
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`Ergo Licensing, LLC v. Carefusion 303, Inc., 673 F.3d 1361 (Fed. Cir. 2012) ........................... 10
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`Glob. Maintech Corp. v. I/O Concepts, Inc., 179 F. App’x 47 (Fed. Cir. 2006) ............................ 7
`
`In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011) ......... 10
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`Intell. Ventures II LLC v. BITCO Gen. Ins. Corp., No. 615CV59, 2016 WL 125594 (E.D.
`Tex. Jan. 11, 2016) .................................................................................................................... 8
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`Lockheed Martin Corp. v. Space Systems/Loral, Inc.,. 324 F.3d 1308 (Fed. Cir. 2003) .. 4, 10, 12,
`13
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`Mediatek, Inc. v. Sanyo Elec. Co., 513 F. Supp. 2d 778 (E.D. Tex. 2007)..................................... 6
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`Phillips v. AWH Corp., 415 F.3d 1303, (Fed. Cir. 2005) ............................................................... 6
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`Spa Syspatronic AG v. United States, 117 Fed. Cl. 375 (2014) .................................................... 11
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`Zeroclick, LLC, v. Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018) .......................................... 14
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`STATUTES
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`§ 112............................................................................................................................................ 3, 4
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`iii
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`Case 1:19-cv-00859-RTH Document 91 Filed 07/01/22 Page 4 of 18
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`Defendant, the United States, respectfully submits this Sur-Reply Claim Construction
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`Brief on Indefiniteness in response to Plaintiffs e-Numerate Solutions, Inc. and e-Numerate
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`Solutions, LLC’s (collectively, “e-Numerate”) Reply Brief on Indefiniteness (ECF 89).
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`I.
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`INTRODUCTION
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`In an effort to avoid a finding of indefiniteness as to many means-plus-function terms, e-
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`Numerate’s Reply requests that this Court defer ruling in many cases because it has identified a
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`potential algorithm within the relevant asserted patent and that the determination as to the
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`adequacy of any such algorithm must be deferred until the summary judgment stage. e-
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`Numerate relies on a single case with unique circumstances that do not apply here. This case has
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`been pending for three years, the parties have submitted expert declarations in support of their
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`positions, and both parties declined to examine the opposing expert. As detailed below, the
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`disputes are ripe for resolution and any deferral will delay finalizing the parties’ contentions and
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`dispositive motions. Additionally, in rebutting Defendant’s assertion of indefiniteness based on
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`an improper antecedent basis, e-Numerate makes bald assertions as to the disclosure in the
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`patents. As explained below, its citations do not support the assertions it makes. In light of the
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`foregoing, the Court should find each term to be indefinite except for those limited cases where
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`Defendant identified sufficient structure for certain “code for” terms.
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`II.
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`ARGUMENT
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`A.
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`The ‘355 Patent
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`1.
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`‘355 Patent, Term 6: “the step of receiving”
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`In its responsive briefing, Defendant explained how the term “the step of receiving” in
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`claims 15 and 42 could reasonably be understood to be referring to either the limitation
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`“receiving a series of numerical values having tags indicating characteristics of the numerical
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`values” or “receiving a macro defined to perform an operation on the series of numerical values”
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`1
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`Case 1:19-cv-00859-RTH Document 91 Filed 07/01/22 Page 5 of 18
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`as recited in independent claims 1 and 28 by both (1) referring to the surrounding claim language
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`within these claims and (2) citing support from the specification. ECF 83 at 8-9. In its Reply, e-
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`Numerate simply ignores the first argument Defendant made based on the claim language and
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`then dismisses the second argument based on citations from the specification in a conclusory
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`manner. ECF 89 at 4. Both of Defendant’s original arguments are meritorious.
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`First, it is clear from the relevant independent claims’ recitation of “receiving a macro
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`defined to perform an operation on the series of numerical values . . . and the step of receiving
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`the macro comprises receiving the macro including interpreted code, meta-data, and error
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`handling instructions” that receiving a macro includes receiving meta-data, which the parties
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`agree is data about data. The relevant dependent claims require that the “step of receiving
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`comprises receiving tags indicating characteristics selected from the group consisting of:
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`. . . provenance.” Therefore, assuming that the antecedent basis for the “step of receiving” is
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`“receiving a macro. . .” the relevant dependent claims merely require that the meta-data be in the
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`form of tags indicating characteristics about provenance, or the source of an object —
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`information typically stored as meta-data. This is a plausible interpretation. e-Numerate does
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`not even address this argument in its Reply.
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`
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`Second, Defendant buttressed this argument by providing numerous citations from the
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`patent’s specification and appendices that disclose a sample macro document comprising
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`attributes indicating provenance characteristics, as well as the other characteristics recited in the
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`relevant dependent claims. ECF 82 at 8-9. Therefore, the interpretation of the dependent claims
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`discussed above is actually disclosed in the specification, only enhancing its plausibility. e-
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`Numerate’s only rebuttal is to assert that “these citations are not referring to receiving ‘tags’ as
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`set forth in the claims at issue.” ECF 89 at 4. Regardless of whether these citations are directed to
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`2
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`Case 1:19-cv-00859-RTH Document 91 Filed 07/01/22 Page 6 of 18
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`receiving tags, they disclose tags, ‘355 Patent at 50:39-55, which may be sent and received as
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`claimed.
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`Additionally, and as e-Numerate argues, the claims may be read such that the “step of
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`receiving” limitation of Claims 15 and 42 may refer to the “receiving a series of numerical
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`values . . .” The resulting ambiguity renders Claims 15 and 42 of the ‘355 Patent invalid for
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`indefiniteness under § 112, ¶ 2 (pre-AIA).
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`B.
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`The ‘816 Patent
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`1.
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`‘816 Patent, Term 5: “the markup language”
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`In its Reply, e-Numerate asserts that “the markup language” of Claim 12 must be the
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`markup language of both the first and second documents because “[t]he specification is clear that
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`the documents are all in the same markup language.” ECF 89 at 4-5. However, the citations that
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`e-Numerate provides do not establish this. Its first citation is entirely silent as to the markup
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`language of either the first or second markup document. See, ‘816 Patent at 3:65-4:6. Its second
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`citation does not even reference the first or second markup documents but does state that
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`“[a]lthough the preferred embodiment of RDML is a markup language that is a fully compliant
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`implementation of XML version 1.0, other implementations are possible,” id. at 8:44-46,
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`indicating that multiple markup languages are possible. Therefore, e-Numerate’s citations do not
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`support its contention.
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`In reality, the specification discloses the use of different markup languages and different
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`markup languages can be used for the first and second markup document in Claim 10 from
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`which Claim 12 depends. The patent teaches that “XML is a free-form markup language with
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`unspecified tags, which allows developers to develop their own tags and, in effect, create their
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`own markup languages geared toward specialized tasks. . . As such, different professions may
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`develop their own specialized markup languages.” Id at 2:1-8 (emphasis added). While the
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`3
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`Case 1:19-cv-00859-RTH Document 91 Filed 07/01/22 Page 7 of 18
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`specification discloses an exemplary embodiment in which the RDML language comprises line
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`items with attributes such as li_unit, li_mag, li_mod, li_measure, and li_scale, id. at 20:33-37, a
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`second language can also be developed with XML, as taught in the patent, in which the same
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`concepts are associated with attributes with different names, such as unit, magnitude, modifier,
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`measure, and scale. In such a case, a first document may be written in the disclosed RDML
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`markup language with a series of numbers written in one format, e.g. with an “li_unit” attribute
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`with a value of “$” and a second document may be written in a second language with a series of
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`numbers written in a different format with a “unit” attribute with a value of “£.” These two
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`documents, written in different markup languages (based on the different attributes) and using
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`different formats, could then be “automatically transformed” as claimed as if they had been
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`written in the same markup language but with different formats. Hence, the use of different
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`markup languages for the first and second markup documents is taught by the patent. As this
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`results in ambiguity as to whether the “markup language” of Claim 12 refers to the first or
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`second markup documents, Claim 12 of the ‘816 Patent invalid for indefiniteness under § 112, ¶
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`2.
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`2.
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`‘816 Patent, Term 6: “means for receiving . . .”
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`In the interest of narrowing the issues before the Court, Defendant previously agreed to
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`not contest e-Numerate’s identification of function and structure for this term.
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`3.
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`‘816 Patent, Term 7: “means for automatically transforming. . .”
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`In its Reply, e-Numerate simply repeats its previous arguments without substantively
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`responding to Defendant’s arguments and caselaw. First, in terms of the relevant function, e-
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`Numerate again cites to Lockheed Martin Corp. v. Space Systems/Loral, Inc., where the court
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`excluded a “whereby” clause from the claimed function. 324 F.3d 1308, 1319 (Fed. Cir. 2003).
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`However, in that case, the district court had previously limited the relevant means-plus-function
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`4
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`Case 1:19-cv-00859-RTH Document 91 Filed 07/01/22 Page 8 of 18
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`clause to “a means having the function of ‘rotating said wheel,’” id. at 1318-1319, and the
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`Federal Circuit expanded it to be “properly identified as ‘rotating said wheel in accordance with
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`a predetermined rate schedule which varies sinusoidally over the orbit at the orbital frequency of
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`the satellite.’” Id. at 1319. The court excluded the language of a subsequent “whereby” clause
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`“because a whereby clause that merely states the result of the limitations in the claim adds
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`nothing to the substance of the claim.” Id.
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`Yet, in its Reply, e-Numerate does not respond to Defendant’s argument that the portion
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`of the claim that e-Numerate seeks to strike after “so that” does not merely state the result of the
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`limitation but rather serves to identify and define the recited “automatically transforming”
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`function. Similarly, e-Numerate’s reliance on BBA Nonwovens Simpsonville, Inc. v. Superior
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`Nonwovens, LLC, 303 F.3d 1332 (Fed. Cir. 2002) is also unavailing. While e-Numerate
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`characterizes that as a case where the court excluded language following “so that,” the relevant
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`claim language was “corona means cooperating with said attenuator and positioned for
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`electrostatically charging the filaments so that repelling forces are induced in the filaments to
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`more uniformly spread the filaments before they are deposited on said collection surface to form
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`a web,” see id. at 1343, and the court excluded all the language after “positioned.” Id. at 1344.
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`Therefore, while the Court omitted language after “so that” it also excluded language preceding
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`the “so that” because “[w]hat the ‘corona means’ is and where it is located are two different
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`things.” Id. Here, the language after “so that” does not describe the positioning of the
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`“automatically transforming” means but describes the “automatically transforming” means and
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`should be part of the function.
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`e-Numerate also does not substantively respond to caselaw Defendant previously cited.
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`In response to Defendant’s citation of Mediatek, Inc. v. Sanyo Elec. Co., 513 F. Supp. 2d 778,
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`5
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`Case 1:19-cv-00859-RTH Document 91 Filed 07/01/22 Page 9 of 18
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`(E.D. Tex. 2007) and Competitive Techs. v. Fujitsu Ltd., 286 F. Supp. 2d 1161 (N.D. Cal. 2003),
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`aff’d sub nom. Competitive Techs., Inc. v. Fujitsu Ltd., 185 F. App’x 958 (Fed. Cir. 2006), it
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`merely provides a footnote stating that these are “fact-specific applications of the rules” set forth
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`in the cases it cited and “do not compel the Government’s proposed construction.” ECF 89 at 5
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`n.2.
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`e-Numerate takes issue with the use of experts during claim construction arguing that
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`Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) counsels against such use. ECF 89
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`at 5 n.1. e-Numerate is mistaken. In Philips the Federal Circuit explained that “extrinsic
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`evidence in the form of expert testimony can be useful to a court for a variety of purposes, such
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`as to provide background on the technology at issue, to explain how an invention works, to
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`ensure that the court’s understanding of the technical aspects of the patent is consistent with that
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`of a person of skill in the art, or to establish that a particular term in the patent or the prior art has
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`a particular meaning in the pertinent field.” Id. Since Phillips, the Federal Circuit has approved
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`trail courts’ use of expert testimony when read in the context of the intrinsic evidence. E.g.,
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`Glob. Maintech Corp. v. I/O Concepts, Inc., 179 F. App’x 47, 51-52 (Fed. Cir. 2006) (“Here, the
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`district court considered the context of the intrinsic evidence and properly relied on the extrinsic
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`evidence merely to support the conclusion reached on claim construction from the claims, the
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`written description, and the prosecution history”) (emphasis added).
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`In terms of the relevant structure, e-Numerate relies on Cellcast Tech., LLC v. United
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`States, for the proposition that if there is a dispute as to the adequacy of a disclosed algorithm,
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`that dispute cannot be resolved at this stage of the litigation. 150 Fed. Cl. 353, 380 (2020). e-
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`Numerate is mistaken for several reasons. First, Cellcast did not provide a rule stating that such
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`determinations must always be deferred to summary judgment. There, the court did not have the
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`Case 1:19-cv-00859-RTH Document 91 Filed 07/01/22 Page 10 of 18
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`benefit of “the expert reports, declarations, and testimony necessary to evaluate the sufficiency
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`of any disclosed algorithms, [and therefore] the Court [was] unable to make such a
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`determination.” Id. at 388. In contrast, in the present action Defendant’s expert has submitted
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`two declarations totaling over 65 pages that address the sufficiency issue. e-Numerate has had
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`the first declaration (dated December 3, 2021) for close to seven months and the supplemental
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`declaration (addressing a single ‘748 Patent claim term, dated February 11, 2022) for over four
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`months. In its prior briefing, Defendant specifically invited e-Numerate to depose Defendant’s
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`expert before the claim construction process briefing period expired, ECF 83 at 17, yet e-
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`Numerate has been steadfast in its refusal to depose Defendant’s expert during this time period in
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`spite of numerous extensions. ECF 84 at 2 (“Plaintiffs have represented to Defendant that they
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`do not intend to take the deposition of Defendant’s expert, Dr. David Martin, with respect to his
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`declarations of December 3, 2021 and February 11, 2022 during the claim construction process
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`and will not seek additional extensions to pursue such a deposition”). The Court also has e-
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`Numerate’s expert declaration and Defendant has declined to depose him because that
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`declaration stands on its own and needs no further explication. Therefore, all disputes as to the
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`adequacy of an algorithm are ripe for determination in a case which has been pending for three
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`years.
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`In analogous situations other trial courts have determined the sufficiency of the disclosure
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`in the patent for the relevant algorithm. For example, in Intell. Ventures II LLC v. BITCO Gen.
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`Ins. Corp., the court held that the term “encryption/decryption module adapted to randomly
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`generate a device key seed Sd according to a time interval between two specific operations on
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`the storage device, and adapted to apply the generated device key seed Sd to data encryption of
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`the data D” was a means-plus-function term subject to § 112, ¶ 6. No. 615CV59, 2016 WL
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`7
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`Case 1:19-cv-00859-RTH Document 91 Filed 07/01/22 Page 11 of 18
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`125594, at *27 (E.D. Tex. Jan. 11, 2016). It determined that the relevant function included “to
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`randomly generate a device key seed Sd according to a time interval between two specific
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`operations on the storage device,” but there was only sufficient disclosure as to a portion of this
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`function. Id. (“Though the specification describes techniques for determining the time interval,
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`the specification does not disclose structure that ‘to randomly generate a device key seed Sd
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`according to a time interval.’”) (internal citation omitted). Hence, the court found the term
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`indefinite. Id.; see also Digital Retail Apps, Inc. v. H-E-B, LP, No. 6-19-CV-00167-ADA, 2020
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`WL 376664, at *7 (W.D. Tex. Jan. 23, 2020) (“Because the specification in the [asserted patent]
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`does not contain an adequate disclosure of the structure that corresponds to the claimed function,
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`[patentee] failed to particularly point out and distinctly claim the invention as required by the
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`second paragraph of section 112, which renders the claim invalid for indefiniteness”) (internal
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`citations omitted). This Court should rule in the same manner.
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`Finally, if this Court were to defer ruling on the relevant structure for this and the other
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`means-plus-function terms, the parties would be hamstrung in determining the adequacy of the
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`infringement and invalidity contentions served as these contentions may only disclose
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`infringement based on an incomplete algorithm. Since these contentions would be the basis for
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`future summary judgment motions, there would be a cascading impact based on a decision to
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`forego ruling on these terms during claim construction.
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`4.
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`‘816 Patent, Term 8: “means for combining . . .”
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`The first issue is the relevant function of this means-plus-function term. As in the case of
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`the “means for automatically transforming. . .” term, e-Numerate truncates the relevant function,
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`asserting that it is simply “combining the first markup document and the second markup
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`document.” However, a person of ordinary skill in the art would understand that the relevant
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`function is not merely combining the two documents in the abstract but “into a single data [set].”
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`8
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`Case 1:19-cv-00859-RTH Document 91 Filed 07/01/22 Page 12 of 18
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`Hence, the omitted language does not “merely state[] the result of the limitations in the claim,”
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`rather it adds “to the substance of the claim” and should not be excluded. See Lockheed, 324
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`F.3d at 1319.
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`The second issue with this term is whether it falls within the narrow exceptions provided
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`by In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011). e-
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`Numerate alleges that Defendant failed to cite any authority for why “combining” could not be
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`performed by a general-purpose computer. ECF 89 at 7. In reality, it is e-Numerate’s burden to
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`establish that “combining” falls within In re Katz as such functionality is not discussed in that
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`decision. Notably, e-Numerate is silent as to the other cases Defendant cited finding that In Re
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`Katz did not apply. Ergo Licensing, LLC v. Carefusion 303, Inc., 673 F.3d 1361, 1364-1365
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`(Fed. Cir. 2012) (“It is only in the rare circumstances where any general-purpose computer
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`without any special programming can perform the function that an algorithm need not be
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`disclosed”); EON Corp. IP Holdings LLC v. AT & T Mobility LLC, 785 F.3d 616, 621-24 (Fed.
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`Cir. 2015) (finding that the Katz exception did not apply, as the exception is limited to “basic
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`functions of a microprocessor,” and does not extend to “special programming” even when such
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`programming is done by “off-the-shelf” software); Spa Syspatronic AG v. United States, 117
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`Fed. Cl. 375, 392 (2014) (finding that the Katz exception did not apply for a “function of
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`producing an access code by one chip and then the utilization of it by another chip to grant
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`access to its stored data goes beyond storing or retrieving data”).
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`Finally, e-Numerate asserts that a “collection data structure” could perform the relevant
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`functionality. However, “storing” separate and distinct documents in a “collection data
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`structure” so they may be separately retrieved, is not the same as combining two documents into
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`a single data [set]; an algorithm describing how the function of combining is performed must be
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`9
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`Case 1:19-cv-00859-RTH Document 91 Filed 07/01/22 Page 13 of 18
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`disclosed. Defendant’s expert confirms that a person of ordinary skill in the art would not
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`recognize such an algorithm within the patent. ECF 81-7 (“Martin Decl.”) at ¶ 93. Accordingly,
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`the term is indefinite.
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`5.
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`‘816 Patent, Term 9: “means for displaying …”
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`In the interest of narrowing the issues before the Court, Defendant previously agreed to
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`not contest e-Numerate’s identification of function and structure.
`
`C.
`
`The ‘383 Patent
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`1.
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`‘383 Patent, Term 13: “means for identifying . . .”
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`The first issue is the relevant function of this means-plus-function term. As in the case of
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`the other means-plus-function terms, e-Numerate truncates the relevant function removing a
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`“whereby” clause. However, a person of ordinary skill in the art would understand that the
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`“whereby” clause is necessary to describe the function to be performed. See Martin Decl. at
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`¶¶ 112-114. Hence, the omitted language does not “merely state[] the result of the limitations in
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`the claim,” rather it adds “to the substance of the claim” and should not be excluded. See
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`Lockheed, 324 F.3d at 1319.
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`The second dispute is whether there is sufficient disclosure of the corresponding
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`structure. e-Numerate’s reliance on the “reader” is misplaced. As previously explained, ECF 83
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`at 23-24, the reader cannot enforce the claim’s requirement that the tags are “semantic tags.”
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`Additionally, a general-purpose computer without special programming cannot perform the
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`required function of determining whether two sets of “characteristics of values” associated with
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`tags are different. See Martin Decl. at ¶¶ 115–117. At bottom, e-Numerate is merely pointing to
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`a “black box” that performs the function but fails to explain how it does so. Accordingly, the
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`term is indefinite.
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`10
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`Case 1:19-cv-00859-RTH Document 91 Filed 07/01/22 Page 14 of 18
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`2.
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`‘383 Patent, Term 14: “means for automatically transforming . . . ”
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`As e-Numerate notes, the issues for this term track those for the “means for automatically
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`transforming” term in the ‘816 Patent (Term 7). As with the ‘816 Patent, e-Numerate has
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`truncated a relevant portion of the claim by omitting the “so that” clause. However, the clause is
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`necessary to describe the function to be performed. See Martin Decl. at ¶¶ 125. Hence, the
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`omitted language does not “merely state[] the result of the limitations in the claim,” rather it adds
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`“to the substance of the claim” and should not be excluded. See Lockheed, 324 F.3d at 1319. In
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`terms of the relevant structure, e-Numerate argues that it has identified an algorithm and
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`therefore the Court should not determine the adequacy of that algorithm during claim
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`construction. However, as discussed supra, the Cellcast decision is not on-point due to the
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`expert declarations that the parties have submitted and the opportunity already afforded to
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`examine these experts. Finally, Phillips allows the use of such expert declarations to supplement
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`the intrinsic evidence as previously discussed.
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`3.
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`‘383 Patent, Term 15: “means for processing . . .”
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`As e-Numerate notes, the issues for this term track those for the “means for combining”
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`term in the ‘816 Patent (Term 8). The first issue with this term is whether it falls within the
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`narrow exceptions provided by In re Katz. However, as the relevant function is not merely
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`“processing” but “processing at least a part of the first markup document and at least a part of the
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`second markup document, resulting in a single markup document,” In re Katz does not apply.
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`Finally, e-Numerate’s reliance on “collection data store” as the relevant structure does not pass
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`muster here for the same reason it fails for the corresponding term in the ‘816 Patent.
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`4.
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`‘383 Patent, Term 16: “means for causing a display…”
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`In the interest of narrowing the issues before the Court, Defendant previously agreed to
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`not contest e-Numerate’s identification of function and structure.
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`11
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`Case 1:19-cv-00859-RTH Document 91 Filed 07/01/22 Page 15 of 18
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`D.
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`The ‘748 Patent
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`1.
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`‘748 Patent, Terms 7-16
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`In contesting that the “code for” limitations should be read as means-plus-function terms,
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`e-Numerate stresses that the specification teaches the use of conventional computer code such as
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`Microsoft Excel Visual Basic to practice the claimed invention and points to the code contained
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`in Appendices F and G. However, as Defendant previously explained, this is a non-sequitur that
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`misses the mark. The correct standard is whether a person of ordinary skill in the art would
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`recognize the code specified as a known structure, not the programming language in which the
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`code is written. Zeroclick, LLC, v. Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018) (the term
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`“user interface code” recognized as particular known structure because it was a “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”). If e-Numerate’s framework were the correct one, mere disclosure of a
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`conventional programming language used to write any particular code would be sufficient to
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`avoid application of means-plus-function framework for any “code for” claim element regardless
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`of the nature of the code at issue.
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`Defendant’s expert has opined that a person of ordinary skill in the art would understand
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`that the various “code for” limitations do not refer to known or conventional programs or code
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`from the time of the invention but would be understood to describe black-box functionality. See.
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`e.g., Martin Decl. at ¶¶ 165, 172. In contrast, e-Numerate’s expert merely opined that a person
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`of ordinary skill in the art “would understand that ‘code for’ would refer to conventional
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`computer programming languages that existed at the time of the invention.” ECF 181-9 at ¶ 65.
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`This falls short of what is required under Zeroclick.
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`e-Numerate’s suggestion that the “computer program product” recited at various point in
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`claim 11 of the ‘748 Patent, including its preamble, indicates that it is referring to “conventional
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`12
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`Case 1:19-cv-00859-RTH Document 91 Filed 07/01/22 Page 16 of 18
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`computer code” defies logic. The preamble simply states “[a] computer program product
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`embodied on a non-transitory computer readable medium, comprising.” If that indicated that the
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`forthcoming claim was conventional computer code, then under e-Numerate’s reasoning, the
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`patentee was conceding that the entire claim was known prior art. Further, had e-Numerate
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`agreed that these limitations were mean-plus-functions claims it could have potentially pointed to
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`the code disclosed in the appendices as part of the relevant structure.
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`e-Numerate also fails to engage with respect to Defendant’s cited case law. It simply
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`asserts that the “logic to” recited in the patent at issue in Egenera Inc. v. Cisco Systems, Inc., 972
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`F.3d 1367 (Fed. Cir. 2020) is not the same “code for.” However, there the Federal Circuit
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`determined that “logic” was “no more than a ‘black box recitation of structure.’” Id. at 1375. It
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`is therefore analogous to this case. Similarly, e-Numerate does not even attempt to substantively
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`address Cypress Lake Software, Inc. v. Samsung Electronics America, Inc., 382 F. Supp. 3d 586
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`(E.D. Tex. 2019).
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`Accordi