Case 1:19-cv-00859-RTH Document 92 Filed 07/15/22 Page 1 of 11
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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,
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`C.A. No. 19-859-RTH
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`Plaintiffs,
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`v.
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`
`
`THE UNITED STATES OF AMERICA,
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`
`
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`
`
`Defendant.
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`PLAINTIFFS’ SUR-REPLY CLAIM CONSTRUCTION BRIEF ON INDEFINITENESS
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`Dated: July 15, 2022
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`
`
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`
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`Respectfully submitted,
`
`/s/ Sean T. O’Kelly
`Sean T. O’Kelly
`Gerard M. O’Rourke
`O’KELLY & O’ROURKE, LLC
`824 N. Market Street, Suite 1001A
`Wilmington, DE 19801
`302-778-4000
`sokelly@okorlaw.com
`gorourke@okorlaw.com
`
`Attorneys for Plaintiffs
`
`
`
`
`IN THE UNITED STATES COURT OF FEDERAL CLAIMS
`
`
`
`
`
`
`E-NUMERATE SOLUTIONS, INC. and
`
`
`E-NUMERATE, LLC,
`
`C.A. No. 19-859-RTH
`
`Plaintiffs,
`
`v.
`
`
`
`
`THE UNITED STATES OF AMERICA,
`
`
`
`
`
`
`Defendant.
`
`PLAINTIFFS’ SUR-REPLY CLAIM CONSTRUCTION BRIEF ON INDEFINITENESS
`
`Dated: July 15, 2022
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Sean T. O’Kelly
`Sean T. O’Kelly
`Gerard M. O’Rourke
`O’KELLY & O’ROURKE, LLC
`824 N. Market Street, Suite 1001A
`Wilmington, DE 19801
`302-778-4000
`sokelly@okorlaw.com
`gorourke@okorlaw.com
`
`Attorneys for Plaintiffs
`
`
`
`
`Case 1:19-cv-00859-RTH Document 92 Filed 07/15/22 Page 2 of 11
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`Table of Contents
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`INTRODUCTION ............................................................................................................................... 1
`I.
`II. ARGUMENT ....................................................................................................................................... 1
`‘355 Patent – Claims 15 and 42 (“the step of receiving”) – Term 6 ......................................................... 1
`‘816 Patent – Claim 12 (“the markup language) – Term 5 ....................................................................... 3
`‘816 Patent – Claim 26 (“means for”… “receiving”, “transforming”, “combining” and “displaying.” –
`Terms 6 – 9 ............................................................................................................................................... 4
`A. The Adequacy of the Algorithm Cannot Be Evaluated On The Present Record. ................. 4
`B. The Katz Exception Applies To The Means For “Receiving,” “Combining” and
`“Displaying” ........................................................................................................................................ 6
`‘383 Patent – Claim 18 (“means for”… “identifying”, “transforming”, “processing” and “causing a
`display.” – Terms 13 – 16 ......................................................................................................................... 6
`‘748 Patent – Claim 11 (“Code for…”) – Terms 7 – 16 ........................................................................... 6
`III.
`CONCLUSION ............................................................................................................................... 7
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`i
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`Case 1:19-cv-00859-RTH Document 92 Filed 07/15/22 Page 3 of 11
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`Table of Authorities
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`Cases
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`Cellcast Tech., LLC v. United States, 150 Fed. Cl. 353 (C.F.C. 2020) ...................................... 4, 5
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`Cypress Lake Software, Inc. v. Samsung Electronics America, Inc., 382 F. Supp. 3d 586 (E.D.
`
`Tex. 2019) ................................................................................................................................... 7
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`Finisar Corp. v. DirecTV Grp, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) .................................. 5
`
`In re Katz Interactive Call Processing Patent Litigation, 639 F.3d. 1303 (Fed. Cir. 2011) .......... 6
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`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) .................................................. 1, 2
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`Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385-86 (Fed. Cir. 2011) ..................... 4
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`Zeroclick, LLC, v. Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018) ............................................ 7
`
`
`
`
`
`
`
`ii
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`
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`Case 1:19-cv-00859-RTH Document 92 Filed 07/15/22 Page 4 of 11
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`I.
`
`INTRODUCTION
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`
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`Pursuant to the Court’s Scheduling Order (D.I. 87), Plaintiffs e-Numerate Solutions, Inc.
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`and e-Numerate, LLC’s (collectively, “e-Numerate”) submit this brief in response to the
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`Government’s sur-reply brief on indefiniteness. Because the parties have already thoroughly
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`briefed the issues over four prior briefs, e-Numerate will limit this reply to the core
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`indefiniteness issues in dispute.
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`II.
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`ARGUMENT
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`
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`The claims involving the disputed terms are addressed in order.
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`‘355 Patent – Claims 15 and 42 (“the step of receiving”) – Term 6
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`The Government’s position is that it is merely plausible that the “step of receiving” in
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`claims 15 and 42 could refer to the step of receiving the macro. To reach this dubious
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`conclusion, the Government argues that the independent claims at issue specify that the macro
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`contains meta-data and that “tags” can be viewed as a type of meta-data. Therefore (or so the
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`argument goes), the “tag” limitations in the dependent claim could be read as referring to the step
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`of receiving the macro. The issue is not how claims could be read, but rather how they would be
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`read from the perspective of a person of ordinary skill in the art. Phillips v. AWH Corp., 415
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`F.3d 1303, 1313 (Fed. Cir. 2005)("The inquiry into how a person of ordinary skill in the art
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`understands a claim term provides an objective baseline from which to begin claim
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`interpretation.") As set forth previously, e-Numerate’s position is clear, logical, and fully in
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`accord with the claim language. The Government’s claim construction is not.
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`1
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`Case 1:19-cv-00859-RTH Document 92 Filed 07/15/22 Page 5 of 11
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`
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`The Government criticizes e-Numerate for giving short shrift to the Government’s
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`citations to the ‘355 patent at col. 50, line 35, and the ‘748 patent at cols. 97 -106 and 107-112.
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`As admitted by the Government, these disclosures are merely directed to an RMML Document
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`Type Definition (cols. 97 – 106) and a sample RMML Document (col. 107 – 112). None of
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`these disclosures show practice of the inventions claimed in claims 15 and 42 of the ‘355 patent
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`(or their respective independent claims). As a result, the disclosures do not support the
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`Government’s interpretation.
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`
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`The Government’s argument also ignores the fact that independent claims 1 and 28
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`already contain a further limitation on the step of receiving the macro. Specifically: “the step of
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`receiving the macro comprises receiving the macro including interpreted code, meta-data, and
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`error handling instructions.” If the Government were correct (and it is not) in its interpretation
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`that the dependent claims refer to the step of receiving the macro, then, in order to comply with
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`proper patent parlance, the dependent claims should read “wherein the step of receiving further
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`comprises receiving tags indicating characteristics selected from the group consisting of: (1)
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`value, (2) semantics, (3) format, (4) measurement, (5) structure, and (6) provenance.” However,
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`that language is not found in the dependent claims. In short, the Government’s construction is
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`both illogical and contrary to standard patent practice.
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`
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`In contrast, e-Numerate’s construction is consistent with the natural and logical reading
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`of the claim language. e-Numerate’s construction reads the claim from the perspective of a
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`person of ordinary skill in the art as required by Phillips. The Government’s construction does
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`not (and is contrary to standard patent practice).
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`
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`The Court should adopt e-Numerate’s construction and reject the Government’s
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`indefiniteness challenge.
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`2
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`Case 1:19-cv-00859-RTH Document 92 Filed 07/15/22 Page 6 of 11
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`‘816 Patent – Claim 12 (“the markup language) – Term 5
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`
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`The Government’s argument relies on a concocted hypothetical in which it purports to
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`show that the two markup documents could somehow be written in different markup languages.
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`The Government has not pointed to any disclosure in the ‘816 patent where such an
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`implementation of claim 12 is shown. Nor could it, because there is none. Instead, the
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`Government can only point to the background of the invention in the ‘816 patent where the
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`problems with the XML standard are described.
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`
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`In light of this fatal deficiency in its argument, the Government twists the disclosure of
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`the ‘816 patent regarding transformation of numerical values having different attributes in two
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`different markup documents into numerical values with common attributes (i.e., a common
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`format). The Government asserts that this disclosure illustrates that the two markup documents
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`are, somehow, in different markup languages because they contain different attributes. The
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`Government is wrong.
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`The specification teaches transformation of numerical values having different attributes
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`located in two different markup documents. However, the specification is clear that both
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`documents are written in the same markup language (RDML). As set forth in the specification
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`of the ‘816 patent, RDML is compliant with the XML standard but improves upon it by using
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`attributes describing the meaning of the numerical value in the markup language tags (which is a
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`feature neither taught nor suggested by the XML standard).
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`3
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`Case 1:19-cv-00859-RTH Document 92 Filed 07/15/22 Page 7 of 11
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`‘816 Patent – Claim 26 (“means for”… “receiving”, “transforming”, “combining” and
`“displaying.” – Terms 6 – 9
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`
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`e-Numerate refers the Court to its prior briefing on the proper “functions” recited in claim
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`26. e-Numerate constructions are correct for the reasons previously set forth. The Government’s
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`constructions are incorrect because, inter alia, the Government invariably includes in the
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`function all of the language between the word “means” and the semicolon at the end of the
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`limitation at issue. That is contrary to the Federal Circuit precedent cited by e-Numerate. e-
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`Numerate will limit its discussion to: (1) adjudication of the sufficiency of the disclosed
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`algorithm in the “means for automatically transforming” limitation; and (2) the applicability of
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`the exception to the algorithm rule for the means for “receiving,” “combining” and “displaying”
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`limitations.
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`A. The Adequacy of the Algorithm Cannot Be Evaluated On The Present Record.
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`The Government errs by asserting that the adequacy of the disclosed algorithm for the
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`
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`“means for transforming” limitation can be decided at this point in the proceedings. That is
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`contrary to this Court’s holding in Cellcast Tech., LLC v. United States, 150 Fed. Cl. 353 (C.F.C.
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`2020).
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`
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`As set forth in Cellcast, the proper (and only) inquiry at this point in the proceedings is
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`whether there is some algorithm disclosed, and not whether the disclosure is adequate. In
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`connection with that inquiry, the Federal Circuit has held that a wide variety of disclosures may
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`meet the algorithm disclosure requirement. For example, the algorithmic structure need not be
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`the operative source code itself. See Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376,
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`1385-86 (Fed. Cir. 2011). "For computer-implemented procedures, the computer code is not
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`required . . . . A description of the function in words may 'disclose, at least to the satisfaction of
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`4
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`Case 1:19-cv-00859-RTH Document 92 Filed 07/15/22 Page 8 of 11
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`one of ordinary skill in the art, enough of an algorithm to provide the necessary structure under §
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`112, ¶ 6.'" Id. (quoting Finisar Corp. v. DirecTV Grp, Inc., 523 F.3d 1323, 1340 (Fed. Cir.
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`2008)).
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`
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`Here, the specification unequivocally discloses the use of conversion factors to transform
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`numbers and provides examples of the same. A person of ordinary skill in the art would readily
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`understand what the relevant conversion factor is for the numbers to be transformed (e.g., feet to
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`miles; lbs to kgs; yen to dollars, etc.). There is manifestly a disclosure of an algorithm under the
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`governing law.
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`There is also no procedural basis to adjudicate the adequacy of this algorithm at this
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`point. Discovery has not even begun; much less been completed. The parties have not proffered
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`expert reports pursuant to Fed. R. Civ. P. Rule 26, nor have the experts been deposed on those
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`reports. In short, this case is not at the summary judgment phase.
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`Once the parties get to that point procedurally, then this may (or may not) be resolvable
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`given the summary judgment standard. However, this Court has been abundantly clear that
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`“[s]uch evaluations are best left for summary judgment, allowing the parties the ability to
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`conduct expert discovery proceedings and present all necessary arguments and evidence.”
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`Cellcast, 150 F.3d at 381. Until then, the Court should reject the Government’s efforts to
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`invalidate these claims at a procedurally inappropriate time and in a procedurally inappropriate
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`manner.
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`5
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`Case 1:19-cv-00859-RTH Document 92 Filed 07/15/22 Page 9 of 11
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`B. The Katz Exception Applies To The Means For “Receiving,” “Combining” and
`“Displaying”
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`
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`The Government’s other argument is that the exception to the algorithm requirement set
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`forth in In re Katz Interactive Call Processing Patent Litigation, 639 F.3d. 1303 (Fed. Cir. 2011)
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`is “narrow.” The Government overlooks that e-Numerate seeks application of that exception
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`only to “means for” terms that are directed to basic computer functions (i.e., receiving,
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`combining, and displaying). These are exactly the type of “means for” terms that Katz upheld
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`without any disclosed algorithm.
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`‘383 Patent – Claim 18 (“means for”… “identifying”, “transforming”, “processing” and “causing
`a display.” – Terms 13 – 16
`
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`The issues here track those raised in connection with the ‘816 patent, claim 26. The
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`“means for automatically transforming” meets the algorithm requirement for the same reasons
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`that the analogous limitation in the ‘816 patent does. Similarly, the exception in Katz applies to
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`the other means terms that recite the same basic computer functions as the analogous terms in the
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`‘816 patent.
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`‘748 Patent – Claim 11 (“Code for…”) – Terms 7 – 16
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`
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`The Government argues that the “code for” claims in claim 11 of the ‘748 patent are in
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`“means-plus-function” format. The Government is wrong.
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`The Government cannot hide from the fact its contention that claim 11 of the ‘748 patent
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`is in means-plus-function format is fundamentally inconsistent with and irreconcilable with its
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`6
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`Case 1:19-cv-00859-RTH Document 92 Filed 07/15/22 Page 10 of 11
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`admission that claim 1 of the ‘383 patent is not in “means-plus-function” format. The
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`Government fails to address this fundamental inconsistency in its briefing.1
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`As set forth previously, the Federal Circuit’s decision in Zeroclick, LLC, v. Apple Inc.,
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`891 F.3d 1003, 1008 (Fed. Cir. 2018), is squarely against the Government’s position. It is
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`controlling precedent whereas Cypress Lake Software, Inc. v. Samsung Electronics America,
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`Inc., 382 F. Supp. 3d 586 (E.D. Tex. 2019), is not.
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`Moreover, this is not a case where the specification merely states which software
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`program could be used to write the code. Here, the specification teaches the use of MS Excel
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`Visual Basic and contains actual code exemplars written in MS Excel Visual Basic and XML
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`version 1.0-compliant RMML. See, e.g., ‘748 Patent at col. 45, lines 25 – 35 and lines 49 – 54
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`and Appendix F and G. Disclosure of this level detail is the antithesis of mere “black box”
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`functionality.
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`III.
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`CONCLUSION
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`For the reasons set forth, e-Numerate respectfully requests that the Court adopt its
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`proposed claim constructions and reject the Government’s indefiniteness challenges.
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`1 The Government has a similar and equally fatal inconsistency in its treatment of the term
`“report” in the patents-in-suit. D.I. 88 at page 8 n.6 (addressing the Government’s
`inconsistency). In its sur-reply to the main claim construction brief, however, the Government
`asserts it was an “oversight.” D.I. 90 at page 18.
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`7
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`Case 1:19-cv-00859-RTH Document 92 Filed 07/15/22 Page 11 of 11
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`Dated: July 15, 2022
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`
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`Respectfully submitted,
`
`/s/ Sean T. O’Kelly
`Sean T. O’Kelly
`Gerard M. O’Rourke
`O’KELLY & O’ROURKE, LLC
`824 N. Market Street, Suite 1001A
`Wilmington, DE 19801
`302-778-4000
`sokelly@okorlaw.com
`gorourke@okorlaw.com
`
`Attorneys for Plaintiffs
`
`
`
`
`
`
`8
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`
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